[Federal Register Volume 64, Number 173 (Wednesday, September 8, 1999)]
[Rules and Regulations]
[Pages 48900-48928]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-22957]
[[Page 48899]]
_______________________________________________________________________
Part II
Department of Commerce
_______________________________________________________________________
Patent and Trademark Office
_______________________________________________________________________
37 CFR Part 1 et al.
Trademark Law Treaty Implementation Act Changes; Final Rule
Federal Register / Vol. 64, No. 173 / Wednesday, September 8, 1999 /
Rules and Regulations
[[Page 48900]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, 3 and 6
[Docket No. 980826226-9185-02]
RIN 0651-AB00
Trademark Law Treaty Implementation Act Changes
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The Patent and Trademark Office (Office) is amending its rules
to implement the Trademark Law Treaty Implementation Act of 1998
(TLTIA), Pub. L. 105-330, 112 Stat. 3064 (15 U.S.C. 1051), and to
otherwise simplify and clarify procedures for registering trademarks,
and for maintaining and renewing trademark registrations. TLTIA
implements the Trademark Law Treaty (TLT). TLT is to make the
procedural requirements of the different national trademark offices
more consistent.
DATES:
Effective Date: October 30, 1999.
Applicability Dates: See SUPPLEMENTARY INFORMATION.
FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of Assistant
Commissioner for Trademarks, by telephone at (703) 308-8910, extension
137; by facsimile transmission addressed to her at (703) 308-9395; or
by mail marked to her attention and addressed to Assistant Commissioner
for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
SUPPLEMENTARY INFORMATION:
Applicability Dates
Pending Applications for Registration: The TLTIA amendments to the
Act, and these rule changes, shall apply to any application for
registration of a trademark pending on, or filed on or after, October
30, 1999.
Informal Applications: Application papers filed before October 30,
1999, but not reviewed by the Office for compliance with minimum filing
requirements until after October 30, 1999, will be required to meet the
minimum filing requirements (Sec. 2.21) in effect as of the date of
filing. If the application fails to meet the minimum filing
requirements in effect on the date of filing, but meets the minimum
filing requirements in effect on the date the papers are reviewed, the
application will be assigned a filing date of October 30, 1999.
Petitions to Revive: Petitions to revive pending on October 30,
1999, will be reviewed under the unintentional delay standard. See the
discussion below of the changes to Sec. 2.66.
Post Registration: The revised provisions of sections 8 and 9 of
the Act, and these amendments to the rules, apply only to affidavits
and renewal applications filed on or after October 30, 1999. The old
law applies to affidavits and renewal applications filed before October
30, 1999, even if the sixth or tenth anniversary, or the expiration
date of the registration is on or after October 30, 1999. This is true
even for affidavits and renewal applications that are filed before, but
examined after, October 30, 1999.
The revised provisions of section 9 of the Act do not apply to
applications for renewal of registrations that expire before October
30, 1999, even if the applications are examined after October 30, 1999.
For example, if a registration expires on October 29, 1999, the
registrant may file a renewal application within the three-month grace
period provided under the old law. The new six-month grace period does
not apply to registrations with expiration dates prior to October 30,
1999.
Likewise, the new law does not apply to a section 8 affidavit due
before October 30, 1999, even if the affidavit is not examined until
after October 30, 1999. For example, if a registration issued on
October 29, 1993, the registrant must meet the statutory requirements
of section 8 of the Act on or before October 29, 1999. The registrant
cannot take advantage of the six-month grace period, or the deficiency
period, provided under the new law.
The revised provisions of section 8 of the Trademark Act, 15 U.S.C.
1058, and these rule changes, apply to the filing of an affidavit of
continued use or excusable nonuse under section 8 of the Act if: (1)
The sixth or tenth anniversary of registration, or the sixth
anniversary of publication under section 12(c) of the Act, is on or
after October 30, 1999; and (2) the affidavit is filed on or after
October 30, 1999. However, the provisions of section 8(a)(3) of the
Act, requiring the filing of a section 8 affidavit at the end of each
successive ten year period after registration, do not apply to a
registration issued or renewed for a twenty year term (i.e., a
registration issued or renewed before November 16, 1989) until a
renewal application is due.
A Notice of Proposed Rulemaking was published in the Federal
Register (64 FR 25223) on May 11, 1999, and in the Official Gazette of
the Patent and Trademark Office (1223 TMOG 41) on June 8, 1999. A
public hearing was held on June 10, 1999.
Written comments were submitted by two organizations, two law
firms, and five trademark attorneys. Three organizations and one
attorney testified at the oral hearing.
References below to ``the Act,'' ``the Trademark Act'' or ``the
statute'' refer to the Trademark Act of 1946, as amended, 15 U.S.C.
1051 et seq. ``TMEP'' is the Trademark Manual of Examining Procedure
(2nd ed., Rev. 1.1, August 1997).
Application Filing Dates
TLTIA section 103 adds sections 1(a)(4) and 1(b)(4) of the Act to
give the Office authority to establish and change filing date
requirements. The Office is amending Sec. 2.21 to require the following
elements for receipt of a filing date: (1) The name of the applicant;
(2) a name and address for correspondence; (3) a clear drawing of the
mark; (4) a list of the goods or services; and (5) the filing fee for
at least one class of goods or services.
Comment: One comment stated that the proposed requirement in
Sec. 2.21(a)(3) for a ``clear drawing of the mark'' was confusing, and
that it could impose a hardship on some applicants, e.g., where the
attorney's only copy of the drawing is a fax received from a foreign
client.
Response: The requirement for a ``clear drawing of the mark'' is
intended to be more lenient than the current requirement for a drawing
``substantially meeting all the requirements of Sec. 2.52.'' A clear
drawing of the mark is essential, so that the application can be
properly examined, and so that the public will have adequate notice of
the mark.
The following elements will no longer be required for receipt of a
filing date: a certified copy of the foreign registration in a section
44(e) application; an allegation of the applicant's use or bona fide
intention to use the mark in commerce; a specimen and date of first use
in commerce in a section 1(a) application; a stated filing basis; and a
signature. These elements will instead be required during examination.
Comment: One comment stated that while a filing date should not be
denied if the application does not include a filing basis, the basis
should be made of record as soon as possible.
Response: The Office expects that most applicants will state the
filing basis in the original application. If the application does not
include the filing basis, this information will be required in the
first Office action.
[[Page 48901]]
Bulky Specimens
Amended Sec. 2.56(d)(1) requires that specimens be flat and no
larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.)
long. This is consistent with current Sec. 2.56. Section 2.56(d)(2) is
added, stating that if an applicant submits a specimen that exceeds the
size requirement (a ``bulky specimen''), the Office will create a
facsimile of the specimen that meets the requirements of the rule
(i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by
11.69 inches (29.7 cm.) long), insert it in the application file
wrapper, and destroy the original bulky specimen.
Currently, when an applicant submits a specimen that does not meet
the requirements of Sec. 2.56 (i.e., is not flat, exceeds the size
limitation, etc.), the Office retains the specimen even though it is
impossible to attach it to the application file wrapper. This requires
substantial special handling because the Office must store and track
the specimens separately from the application file wrappers. Because
the number of newly filed applications has increased from approximately
83,000 to over 233,000 per year over the past ten years, and the number
of pending applications has increased from less than 100,000 to over
350,000 in the same period, it has become increasingly difficult to
ensure that the bulky specimens follow the application files. As the
number of applications has increased, bulky materials submitted as
specimens have also increased, requiring an increased use of limited
resources to handle the bulky materials. Further, because specimens of
this nature are often misplaced or lost during examination processing,
the Office must then require new specimens, slowing examination and
inconveniencing applicants.
Because the requirement for flat specimens can be easily satisfied
through the use of photographs, photocopies, or other means of
reproduction, the Office will no longer retain bulky materials
submitted as specimens. In very limited circumstances, the Office will
continue to accept specimens consisting of videotapes, audiotapes, CDs,
computer diskettes, and similar materials where there are no non-bulky
alternatives, and the submission is the only means available for
showing use of the mark.
Comment: One comment supported the proposed procedure for creating
facsimiles of bulky specimens. Another comment supported the proposed
procedure, provided that the Office makes copies of the front, back,
and all portions of the specimens.
Response: The Office will attempt to capture the mark as used on
the specimen, but may not copy all portions of the bulky specimens. If
an additional specimen is needed, the examining attorney will require a
substitute specimen that meets the size requirements of the rules.
Number of Specimens Required
The Office is amending Secs. 2.56(a), 2.76(b)(2), 2.86(b), and
2.88(b)(2) to require one rather than three specimens with an
application under section 1 of the Act, or an amendment to allege use
or statement of use of a mark in an application under section 1(b) of
the Act. The Office previously required three specimens so that an
interested party, such as a potential opposer, could permanently remove
a specimen from an application file, yet not leave the file without
specimens. TMEP Sec. 905.01. However, multiple copies of specimens are
no longer necessary because the public may make photocopies of a single
specimen.
Comment: Three comments opposed the proposed requirement for only
one specimen, stating that if only one specimen is required, and that
specimen is lost, the file will be left with no specimen; that multiple
specimens enable interested third parties to obtain an original without
having to contact the applicant directly; and that current photocopying
technology does not adequately reproduce color, small details, tones,
low-contrast images, or highly ornate/intricate or densely worded
specimens.
Response: The Office does not permit the removal of other documents
from application files and will no longer permit specimens to be
removed from files. Prohibiting the removal of specimens will ensure
that there is a complete record of the submissions made by the
applicant. Where removal is permitted, a third party could mistakenly
remove a unique specimen, thinking it is merely a duplicate. This would
leave the application file incomplete.
Currently, 10% of new applications for registration are filed
electronically, and the Office expects this number to increase
dramatically in the near future. Only one specimen is required with an
electronically filed application, and it is submitted as a digitized
image (Sec. 2.56(d)(4)). Considering the increasing number of
electronic filings and the move in the future to a paperless Office,
the Office believes that three specimens are unnecessary.
Comment: One comment stated that it generally supports the proposed
requirement for only one specimen, but noted that there will be a
greater urgency for the Office to ensure that the single specimen is
always available for public inspection.
Response: As noted above, the Office will no longer permit
specimens to be removed from files. The Office now microfilms all
incoming applications, so that a record of the specimen is available to
the public if it is lost. In the near future, the Office will be
scanning all incoming applications and allegations of use and will have
an electronic image of any specimen that is lost.
Comment: One comment asked whether more than one specimen may be
submitted.
Response: Yes, while only one specimen will be required, a party
may choose to file more than one specimen. Multiple specimens will be
retained in the file as long as they do not exceed the size limitations
of Sec. 2.56(d)(1).
Persons Who May Sign
Currently, sections 1(a)(1)(A) and 1(b)(1)(A) of the Act require
that an application by a juristic applicant be signed ``by a member of
the firm or an officer of the corporation or association applying.''
TLTIA section 103 amends sections 1(a) and 1(b) of the Act to eliminate
the specification of the appropriate person to sign on behalf of an
applicant.
The applicant or registrant, and the applicant's or registrant's
attorney, are best able to determine who should sign documents filed in
the Office. Therefore, the Office will no longer question the authority
of the person who signs a verification, or a renewal application,
unless there is an inconsistency in the record as to the signatory's
authority to sign.
Proposed Sec. 2.33(a) stated that a person properly authorized to
sign on behalf of the applicant ``includes a person with legal
authority to bind the applicant and/or a person with firsthand
knowledge and actual or implied authority to act on behalf of the
applicant.''
Comment: One comment suggested that Sec. 2.33(a) be amended to
state that a person who is properly authorized to sign on behalf of the
applicant includes: (1) A person with legal authority to bind the
applicant, (2) a person with firsthand knowledge of the facts asserted,
and actual or implied authority to act on behalf of the applicant, and
(3) an attorney as defined in Sec. 10.1(c) of this chapter who has an
actual or implied, written or verbal power of attorney from the
applicant, provided that the Office may require written confirmation of
[[Page 48902]]
such power of attorney subsequent to the filing of the verified
statement.
Response: The suggestion has been adopted, but modified slightly.
The Office will not require written confirmation of a power of
attorney, but will accept the attorney's word that he or she is
authorized to sign on behalf of the applicant.
Comment: One comment suggested that ``and/or'' be changed to
``or.''
Response: The suggestion has been adopted.
Comment: One comment suggested that ``implied authority'' be
changed to ``apparent authority.''
Response: The suggestion has not been adopted. The Office believes
that the ``implied authority'' standard is broad enough to cover most
circumstances and to allow applicants flexibility in determining who
can sign verifications.
Comment: Four comments requested clarification as to whether
attorneys can sign on behalf of clients, and whether any special power
of attorney is needed.
Response: Sections 2.33(a) and 2.161(b) have been amended to
provide for signature of verifications by attorneys. No special power
of attorney will be required.
Renewal applications may also be signed by attorneys. Verification
of renewal applications is no longer required. Section 2.183(a)
requires that the renewal application be executed by ``the registrant
or the registrant's representative.''
Filing by Owner
Although TLTIA amends the statute to eliminate the specification of
the proper party to sign on behalf of an applicant or registrant, the
statute still requires that the owner of the mark file an application
for registration, amendment to allege use, statement of use, request
for extension of time to file a statement of use, and section 8
affidavit. See sections 1(a)(1), 1(b)(1), 1(d)(1), 1(d)(2), and 8(b) of
the Act.
TLTIA section 105 amends section 8 of the Act to require that the
owner of the mark file an affidavit of continued use or excusable
nonuse within the time period set forth in section 8(a) of the Act. The
legislative history states:
Throughout the revised section 8, the term ``registrant'' has been
replaced by the term ``owner.'' The practice at the Patent and
Trademark Office has been to require that the current owner of the
registration file all the post-registration affidavits needed to
maintain a registration. The current owner of the registration must
aver to actual knowledge of the use of the mark in the subject
registration. However, the definition of ``registrant'' in section
45 of the Act states that the ``terms 'applicant' and 'registrant'
embrace the legal representatives, predecessors, successors and
assigns of each applicant and registrant.'' Therefore, use of the
term ``registrant'' in section 8 of the Act would imply that any
legal representative, predecessor, successor or assign of the
registrant could successfully file the affidavits required by
sections 8 and 9. To correct this situation, and to keep with the
general principal (sic), as set out in section 1, that the owner is
the proper person to prosecute an application, section 8 has been
amended to state that the owner must file the affidavits required by
the section.
H.R. Rep. No. 194, 105th Cong., 1st Sess. 18-19 (1997).
Therefore, the Office is amending Secs. 2.163(a) and 2.164(b) to
make it clear that filing by the owner is a minimum requirement that
cannot be cured after expiration of the filing period set forth in
section 8 of the Act.
Under sections 1(a) and 1(b) of the Act, an application for
registration of a mark must also be filed by the owner. Therefore, new
Sec. 2.71(d) states that although a mistake in setting out the
applicant's name can be corrected, the application cannot be amended to
set forth a different entity as the applicant; and that an application
is void if it is filed in the name of an entity that did not own the
mark as of the filing date of the application. This codifies current
practice. TMEP Sec. 802.07. Huang v. Tzu Wei Chen Food Co. Ltd., 7
USPQ2d 1335 (Fed. Cir. 1988) (application filed in name of individual
two days after mark was acquired by newly formed corporation held
void); Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB
1996) (application filed in name of entity that did not yet exist not
void); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991)
(application filed by joint venturer void where mark owned by joint
venture); U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183
USPQ 613 (Comm'r Pats. 1974) (misidentification of applicant's name may
be corrected).
The Office is also amending Secs. 2.88(e)(3), 2.89(a)(3), and
2.89(b)(3) to state that if a statement of use or request for an
extension of time to file a statement of use is unsigned or signed by
the wrong party, a substitute verification must be submitted before the
expiration of the statutory period for filing the statement of use.
This is consistent with current practice. See TMEP
Secs. 1105.05(f)(i)(A) and 1105.05(d). Sections 1(d)(1) and (2) of the
Act require verification by the owner within the statutory period for
filing the statement of use. Therefore, the Office cannot extend or
waive the deadline for filing the verification. In re Kinsman, 33
USPQ2d 1057 (Comm'r Pats. 1993).
Material Alteration
The Federal Circuit held in In re ECCS, 94 F.3d 1578, 39 USPQ2d
2001 (Fed. Cir. 1996) that an applicant may amend an application based
on use to correct an ``internal inconsistency'' in the original
application. Id. at 1581, 39 USPQ2d at 2004. An application is
``internally inconsistent'' if the mark on the drawing does not agree
with the mark on the specimens filed with the application. Id. As a
result, the Office has been accepting all amendments to drawings in
use-based applications if there is an inconsistency in the initial
application.
However, the Office does not believe that it is in the public
interest to accept amendments that materially alter the mark on the
original drawing. When the Office receives a new application, the mark
on the drawing is promptly filed in the Trademark Search Library and
entered into the Office's electronic and administrative systems.
Because the granting of a filing date to an application potentially
establishes a date of constructive use of the mark under section 7(c)
of the Act, timely and accurate public notification of the filing of
applications is important. Accepting an amendment that materially
alters the mark on the original drawing is unfair to third parties who
search Office records between the application filing date and the date
of the amendment, because they do not have accurate information about
earlier-filed applications. Relying on the search of Office records, a
third party may innocently begin using a mark that conflicts with the
amended mark, but not with the original mark. Also, an examining
attorney may approve a later-filed application for registration of a
mark that conflicts with the amended mark, but not with the original
mark. Therefore, the Office is amending Sec. 2.72 to prohibit
amendments that materially alter the mark on the original drawing.
Comments: One law firm opposed any amendment of Sec. 2.72, stating
that the decisions in ECCS and In re Dekra, 44 USPQ2d 1693 (TTAB 1997)
established a fair compromise between the rights of the applicant and
the rights of third parties. One organization stated that minor changes
like the change permitted in ECCS should be allowed, but that it ``does
not endorse the type of substantial change to a drawing permitted in
Dekra,'' and expressed concern that the amendment to Sec. 2.72 could
lead to a more stringent standard for determining material alteration
than the standard set forth in ECCS. The
[[Page 48903]]
comment further noted that the standard for determining whether the
mark in the drawing agrees with the mark in the foreign registration in
a section 44 application is stricter than the standard used to
determine whether specimens support use of a mark in an application
under section 1 of the Trademark Act, and suggested that if a uniform
standard for determining material alteration is adopted, the more
liberal standard applied to section 1(a) or section 1(b) applications
should be used.
Response: ECCS held that under current Sec. 2.72(b), the specimens
filed with the original application in a use-based application must be
considered in determining what mark the applicant seeks to register.
However, the court specifically noted that seven decisions cited in the
ECCS decision were not affected: ``We have carefully examined all * * *
(seven) cases and find that none has any bearing on the situation
before us in which an original application is internally inconsistent
as to what the mark is, the specimen displaying one mark and the
drawing a slightly different mark .* * *'' Id. at 1581, 39 USPQ2d at
2004 (emphasis added). ECCS specifically cited In re Abolio y Rubio
S.A.C.I. y G., 24 USPQ2d 1152 (TTAB 1992) and In re Meditech Int'l
Corp., 25 USPQ2d 1159 (TTAB 1990). ECCS at 1581, 39 USPQ2d at 2004.
Abolio y Rubio involved an application based on a foreign registration
(15 U.S.C. 1026(e)) in which the drawing omitted the design shown in
the foreign registration submitted with the application. Meditech
concerned a use-based application in which the drawing contained the
typed words ``DESIGN OF A BLUE STAR'' while the specimens showed a
design of twenty blue stars without the words shown in the drawing. In
both of these cases, the applicants were not permitted to amend their
drawings. Subsequently, the Federal Circuit in In re Hacot-Colombier,
affirmed the Board's refusal to permit an applicant to amend its
drawing in an application based on a foreign-filed application, 15
U.S.C. 1126(d). 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). Citing
Abolio y Rubio with approval, the Court gave deference to the agency's
interpretation that Sec. 2.72 includes both a prohibition against
material alterations and a requirement that any alteration conform to
the mark in the foreign registration. Id. at 619, 41 USPQ2d at 1526.
The present amendment to Sec. 2.72 is not intended to change the
standard for determining what constitutes a material alteration as
discussed in the Board cases cited in ECCS, or in Hacot-Colombier.
Color Drawings
Section 2.52 is amended to delete the color lining chart currently
in Sec. 2.52(e).
Comment: One comment asked whether the Office would accept drawings
in actual color.
Response: The Office will no longer deny an application a filing
date if the mark is depicted in color. However, the Office does not yet
have the technology to scan marks in color, and the marks will be
uploaded into the Office's automated systems in black and white.
Comment: One comment asked whether marks would be published in the
Official Gazette and issued in color.
Response: The Office will not publish and issue marks in color on
October 30, 1999. However, the Office anticipates publishing and
issuing marks in color in the future.
Comment: Two comments requested that color photocopiers be made
available to the public.
Response: Color photocopiers are very expensive and will not be
available to the public on October 30, 1999. The Office is looking into
purchasing a color copier for use by the public, for a fee, and will
make it available as soon as possible.
Comment: One comment suggested that the Office should permit the
use of lining or stippling to indicate color on a drawing, at least
until an alternative method of indicating color gains wide acceptance.
Response: There will be a transition period in which the Office
will continue to publish and register marks that contain the color
linings currently in Sec. 2.52(e). An Official Gazette notice will
advise when color lining is no longer acceptable.
Comment: One comment noted that proposed Sec. 2.52(a)(2)(i)
referred to color lining, while the color lining chart was deleted from
Sec. 2.52(e).
Response: The reference to color lining has been deleted from
Sec. 2.52(a)(2)(i).
Comment: One comment suggested that the Office clarify what is a
sufficient description and location of color applied to a mark.
Response: The application must include a clear and specific
description of the mark, identifying the mark as consisting of the
particular color as applied to the goods or services. If the color is
applied only to a portion of the goods, the description must indicate
the specific portion. Similarly, if the mark includes gradations of
color, the description should so indicate. The Office will issue an
examination guide giving further guidance as to how it will process
color drawings.
Comment: One comment suggested that the Office accept color
photographs to describe the color claimed in a mark.
Response: In addition to a written description of a mark, the
Office will accept color photographs for the record to describe the
color claimed in a mark.
Comment: Two comments suggested that applicants should have the
option to identify color using a generally accepted color
identification system.
Response: The Office does not endorse any one commercial color
identification system. However, in addition to a written description of
the color contained in a mark, an applicant may refer to a commercial
color identification system to describe color.
Revival of Abandoned Applications
Effective October 30, 1999, sections 1(d)(4) and 12(b) of the Act,
and section 2.66 permit the revival of an abandoned application where
the delay in responding to an Office action or notice of allowance is
``unintentional.'' A showing of ``unavoidable'' delay is no longer
required. All petitions to revive pending on or filed on or after
October 30, 1999, will be reviewed under the unintentional delay
standard.
Under Sec. 2.66(a), the applicant must file a petition to revive
(1) within two months of the mailing date of the notice of abandonment;
or (2) within two months of actual knowledge of the abandonment, if the
applicant did not receive the notice of abandonment, and the applicant
was diligent in checking the status of the application. These deadlines
will be strictly enforced.
The written statement that the delay was unintentional must be
signed by someone with firsthand knowledge of the facts, but it need
not be verified or supported by a declaration under Sec. 2.20.
It is not necessary to explain the circumstances that caused the
unintentional delay. The Office will generally not question the
applicant's assertion that the delay in responding to an Office action
or notice of allowance was unintentional, and will grant the petition,
unless there is information in the record indicating that the delay was
in fact intentional.
See the discussion below of the amendments to Sec. 2.66 for further
information on the requirements for filing a petition to revive.
Comment: One comment suggested that Sec. 2.66(a) (1) and (2) be
amended to provide for filing a petition to revive within two months of
``the mailing date of an adverse decision on a Request For
Reinstatement,'' so as to avoid a disincentive for filing requests for
reinstatement.
[[Page 48904]]
Response: The suggestion has not been adopted because it is
unnecessary. When the Office denies a request for reinstatement, the
Office routinely gives the applicant an opportunity to pay the petition
fee and convert the request for reinstatement into a petition to
revive.
Comment: One comment suggested that Sec. 2.66(a) be amended to
provide for the filing of a petition to revive where the applicant did
not timely respond to ``a decision on the petition (other than a
petition to revive under this rule),'' because ``(t)here may be
instances where a decision on petition is misdirected by the U.S.
Postal Service and results in the abandonment of the application. For
example, consider a petition for an extension of time to commence
judicial review under 37 CFR 2.145(e).''
Response: The suggestion has not been adopted. Sections 1(d)(1) and
12(b) of the Act, 15 U.S.C. 1051(d)(1) and 1062(b), provide for revival
of an abandoned application based on a showing of unintentional delay
only where there is a delay in responding to an Office action or filing
a statement of use or request for an extension of time to file a
statement of use. In the example provided, the remedy is found in
Sec. 2.145(e)(2), which provides that the Commissioner may extend the
time for filing an appeal or commencing a civil action ``upon written
request after the expiration of the period for filing an appeal or
commencing a civil action upon a showing that the failure to act was
the result of excusable neglect.'' In other situations, the remedy is
to file a petition to the Commissioner under Sec. 2.146(a)(5), under
which the Commissioner may waive any provision of the rules that is not
a provision of the statute, where an extraordinary situation exists,
justice requires, and no other party is injured thereby.
Due Diligence
Sections 2.66(a)(2) and 2.146(i) are amended to indicate that where
a petitioner seeks to reactivate an application or registration that
was abandoned or cancelled due to the alleged loss or mishandling of
papers mailed to or from the Office, the petition will be denied if the
petitioner was not diligent in checking the status of the application
or registration. This codifies the long-standing past practice of the
Office. TMEP sections 413, 1112.05(b)(ii), and 1704. To be considered
diligent, the petitioner must check the status of the application or
registration that is the subject of the petition within one year of the
last filing or receipt of a notice from the Office for which further
action by the Office is expected.
The Office now denies petitions when the petitioner waits too long
before checking the status of an application or registration. The
rationale is that granting the petition would be unfair to third
parties who may have searched Office records and relied to their
detriment on information that an application was abandoned or that a
registration had expired or been cancelled. A third party may have
diligently searched Office records and begun using a mark because the
search showed no earlier-filed conflicting marks, or an examining
attorney may have searched Office records and approved a later-filed
application for a conflicting mark.
A party can check the status through the Trademark Status Line
((703) 305-8747) or through the Trademark Applications and
Registrations Retrieval (TARR) database on the Office's World Wide Web
site at http://www.uspto.gov/go/tarr/. Written status inquiries are
discouraged.
Comment: One comment suggested that the one-year due diligence
standard be expressly incorporated into Secs. 2.66(a)(2) and 2.146(i).
Response: The suggestion has been adopted.
Comment: One comment requested guidance as to how one proves that
he or she has been diligent in monitoring the status of a pending
matter.
Response: A party may call the Status Line, or access status
information through the World Wide Web, and make a notation in the
party's own file noting the date of the status inquiry, and the
substance of the information learned. If it is ever necessary to
petition for corrective action, the dates and substance of the status
inquiries should be summarized in the petition. No further
documentation is necessary.
Comment: One comment objected to the requirement that petitioners
be diligent in monitoring the status of pending matters, noting that
docketing a one-year status check every time a paper is filed or
received results in a maze of confusing entries in docketing systems
that makes it difficult to tell which dates have been superseded.
Response: To protect the interests of third parties and to maintain
the integrity of the register, the Office believes that requests to
reactivate abandoned applications or cancelled registrations must be
made within a reasonable time; the Office does not believe that
requiring a status check once per year is unreasonable. Therefore, the
Office will continue its long-standing practice of denying petitions to
revive under Sec. 2.66 and petitions to the Commissioner under
Sec. 2.146 if the petitioner has waited too long before investigating
the problem.
Amendment of Basis After Publication
Proposed Sec. 2.35(b) prohibited an amendment to add or substitute
a basis after publication.
Comments: Four comments opposed the proposed prohibition against
amending the basis after publication, and one comment supported the
proposal.
Response: Because of the arguments submitted by the opponents of
the proposed rule prohibiting amendment of the basis after publication,
the Office is withdrawing the proposal. Section 2.35(b) is instead
amended to incorporate current practice, i.e., to state that an
application that is not the subject of an inter partes proceeding
before the Trademark Trial and Appeal Board may be amended to add or
substitute a basis after publication, if the applicant files a petition
to the Commissioner; and that republication will always be required.
TMEP Sec. 1006.04. An application that is the subject of an inter
partes proceeding before the Trademark Trial and Appeal Board is
governed by Sec. 2.133(a).
Specification of Type of Commerce No Longer Required
The Office will no longer require a specification of the type of
commerce in which a mark is used in an application for registration
based on use in commerce under section 1(a) of the Act, allegation of
use in an application based on section 1(b) of the Act, affidavit of
continued use under section 8 of the Act (section 8 affidavit), or
affidavit of incontestability under section 15 of the Act (section 15
affidavit).
The Office proposed to eliminate the requirements that sections 8
and 15 affidavits specify the type of commerce in which the mark is
used, currently required by Secs. 2.162(e) and 2.167(c). Sections 8 and
15 of the Act do not require that the affidavits list the type of
commerce. Because the definition of ``commerce'' in section 45 of the
Act is ``all commerce which may lawfully be regulated by Congress,''
the Office will presume that a registrant who states that the mark is
in use in commerce is stating that the mark is in use in a type of
commerce that Congress can regulate.
Comment: No comments opposed the proposed deletion of the
requirement that section 8 and section 15 affidavits specify the type
of commerce. One comment suggested that Secs. 2.33(b)(1),
2.34(a)(1)(iii), 2.76(b)(1)(ii), and 2.88(b)(1)(ii) be amended to
require an allegation that the mark is in ``use in
[[Page 48905]]
commerce that can be regulated by the Congress of the United States of
America,'' rather than a specification of the type of commerce in which
the mark is used, in an application for registration or allegation of
use.
Response: The suggestion has been adopted, but modified slightly.
Sections 1(a), 1(c), and 1(d) of the Act do not require that an
applicant specify the type of commerce in which the mark is used in an
application or allegation of use. Sections 2.33(b)(1), 2.34(a)(1)(iii),
2.76(b)(1)(ii), and 2.88(b)(1)(ii) are amended to delete the
requirement that the applicant specify the type of commerce in which
the mark is used. The Office will not require that the applicant
specifically state that the mark is in use in commerce that the United
States Congress can regulate. Instead, the Office will presume that an
applicant who states that the mark is in use in commerce is stating
that the mark is in use in a type of commerce that Congress can
regulate.
Statement of Method of Use or Intended Use of Marks No Longer
Required
The rules no longer require a statement of the applicant's method
or intended method of use of a mark, because sections 1(a), 1(b), and
1(d) of the Act have been amended to omit these requirements.
Post Registration
TLTIA sections 105 and 106 amend: (1) section 8 of the Act, 15
U.S.C. 1058, to add a requirement for filing an affidavit or
declaration of continued use or excusable nonuse in the year before the
end of every ten-year period after the date of registration; and (2)
section 9 of the Act, 15 U.S.C. 1059, to delete the requirement for a
declaration of continued use or excusable nonuse in a renewal
application. Thus, every tenth year, the owner of a registration must
file both a section 8 affidavit and a renewal application.
The statutory filing periods for the ten year section 8 affidavits
are the same as the statutory filing periods for renewal applications.
The Office will create a combined ``Sections 8 and 9'' form to make it
easy to make both filings in a single document. In substance, the
requirements of the combined filing under amended sections 8 and 9 of
the Act will be the same as the requirements for renewal under current
law.
A section 8 affidavit between the fifth and sixth year after the
date of registration is also required. This is consistent with current
law. No renewal application is required during the sixth year.
TLTIA sections 105 and 106 amend sections 8 and 9 of the Act to
permit filing within a six-month grace period after the deadline set
forth in the statute, with an additional surcharge. The surcharge for
filing a section 8 affidavit or section 9 renewal application during
the grace period is $100 per class. If a combined filing under sections
8 and 9 of the Act is filed during the grace period, two grace period
surcharges must be included for each class, one for the section 8
affidavit and another for the section 9 renewal application.
TLTIA sections 105 and 106 also amend sections 8(c)(2) and 9(a) of
the Act to allow for the correction of most deficiencies after the
deadline set forth in the statute, with payment of an additional
surcharge. The surcharge for correcting a deficiency in a section 8
affidavit or a section 9 renewal application is $100. Only a single
deficiency surcharge will be required for correcting deficiencies in a
combined sections 8 and 9 filing, even if both the section 8 affidavit
and the renewal application are deficient.
Comment: One comment requested clarification as to how the
deficiency and grace period fees would be applied to section 8
affidavits and renewal applications pending before or around the date
of implementation.
Response: The new fees do not apply to section 8 affidavits and
renewal applications filed before October 30, 1999. The revised
provisions of sections 8 and 9 of the Act, and these amendments to the
rules, apply only to affidavits and renewal applications filed on or
after October 30, 1999. The old law, and the old fees, apply to
affidavits and renewal applications filed before October 30, 1999, even
if the sixth or tenth anniversary, or the expiration date, of the
registration is on or after October 30, 1999. This is true even for
affidavits and renewal applications that are filed before, but examined
after, October 30, 1999. See the discussion under the heading ``Dates/
Applicability Dates,'' supra, for further information about the
effective date of TLTIA and this final rule.
Comment: One comment suggested that it would be unfair to charge
the deficiency surcharge if large backlogs prevent examination in a
timely manner.
Response: Ultimately, it is the registrant who is responsible for
filing documents that meet the requirements of the Act and the rules.
The surcharges required by sections 8(c)(2) and 9(a) of the Act will be
charged regardless of whether there are backlogs in examination. Under
current law, statutory requirements must be met before the end of the
filing period set forth in the Act, or the registration will be
cancelled. The new law provides a benefit to registrants because it
permits correction of most statutory deficiencies after the expiration
of the statutory filing period, albeit for an additional fee. To avoid
deficiency fees, registrants are encouraged to file section 8
affidavits and renewal applications early in the statutory period.
Under both sections 8 and 9 of the Act, there is a one-year period in
which a section 8 affidavit or renewal application can be filed, plus
an additional six-month grace period. Section 8 affidavits are now
examined within six months of filing, and renewal applications are
examined less than two months after filing.
Comment: One comment stated that it would be unfair to charge a
deficiency surcharge if the information needed to cure defects is
within the control of the PTO, e.g., an assignment or change of name
waiting to be recorded.
Response: If the party who filed was the owner of the registration
at the time of filing, there will be no deficiency surcharge for
recording documents or submitting other evidence of ownership, before
or after the expiration of the filing periods set forth in the Act.
Comment: One comment asked why there was a surcharge for correcting
deficiencies in a section 8 affidavit, but not for a section 15
affidavit.
Response: Section 8(c)(2) of the Act requires a surcharge for
correcting deficiencies after expiration of the deadline set forth in
section 8 of the Act, while section 15 of the Act does not require a
deficiency surcharge. There is no statutory cutoff date for filing a
section 15 affidavit. Amendments or corrections to section 15
affidavits are not accepted, but substitute affidavits may be filed.
TMEP Sec. 1604.03.
Comment: The Office had proposed decreasing the renewal fee from
$300 to $200 per class, and increasing the filing fees for sections 8
and 15 affidavits from $100 to $200 per class. Two comments objected to
the proposed increase in filing fees for sections 8 and 15 affidavits.
Response: The Office is withdrawing these proposals at this time.
Comment: One comment suggested that the automated records of the
Office should specify which affidavits had been filed under section 8
of the Act, e.g., ``first section 8 affidavit,'' ``second section 8
affidavit,'' etc.
Response: The Office's automated records will identify a section 8
affidavit as ``Section 8 (6 year)'' or ``Section 8 (10 year). Further
information may be obtained from the Status Line at (703) 305-8747, or
from the Trademark
[[Page 48906]]
Applications and Registrations Retrieval (TARR) database on the
Office's World Wide Web site at http://www.uspto.gov/go/tarr/. The
prosecution history will show the number of section 8 affidavits that
have been filed.
Recording Assignments and Changes of Name
Currently, the Office will record only an original document or a
true copy of an original. TLTIA section 107 amends section 10 of the
Act to allow recordation of a document that is not an original or a
true copy.
Comment: One comment suggested that Sec. 3.25(a)(4) should be
amended to delete the requirement for signature by the assignee when an
assignment is supported by a statement explaining how the conveyance
affects title. The comment noted that assignments signed only by the
assignor have been routinely recorded for many years; that the rule as
written would be a major change in policy; that the assignment of
trademarks and the associated goodwill is regarded as a matter of state
law, and signature by the assignee is not required by the law of a
number of states; and that the proposed rule would seek to impose by
Federal law an additional requirement in a transaction that is clearly
covered by state law, and raises a question as to whether there is
Federal authority for doing so.
Response: The suggestion has not been adopted. Section 3.25(a) sets
forth a number of types of underlying documents one can submit to the
Office to support a request to record an assignment. Section 3.25(a)(4)
is not a requirement, but only one alternative available to a party
seeking to record an assignment. Traditionally, the only document that
the Office accepted to support a request to record an assignment was
the original assignment document or a true copy of the original
document. Amended Sec. 3.25(a) provides a wider range of supporting
documents. The Office will continue to accept an original assignment
document, or a true copy of an original, that is signed only by the
assignor.
Comment: One comment suggested that Sec. 3.25(b) should be amended
to continue the current requirement for an original or a true copy of
an original with a request to record a change of name. The comment
noted that it is generally easy to obtain a document reflecting a name
change, and would therefore not be a significant burden to parties
seeking to record assignments; and that the proposed rule requiring
only a legible cover sheet would result in a burden to members of the
public seeking to confirm the change in ownership.
Response: The suggestion has not been adopted. The deletion of the
requirement for an underlying document supporting a request to record a
change of name was made because section 10 of the Act no longer
requires an underlying document in a request to record a name change.
Assignment of Section 1(b) Applications
TLTIA section 107 amends section 10 of the Act to permit an
assignment after the applicant files an amendment to allege use under
section 1(c) of the Act. Currently, a section 1(b) application cannot
be assigned until after the filing of a statement of use under section
1(d) of the Act, except to a successor to the applicant's business, or
the portion of the business to which the mark pertains. This amendment
corrects an oversight in the Trademark Law Revision Act of 1988 (Title
1 of Pub. L. 100-667, 102 Stat. 3935 (15 U.S.C. 1051)), which amended
section 10 of the Act to permit an assignment of a section 1(b)
application to someone other than a successor to the applicant's
business only after the filing of a statement of use under section 1(d)
of the Act. The substance of statements of use and amendments to allege
use are the same, and the only difference is the time of filing, so
there is no reason to treat them differently.
Discussion of Specific Rules Changed or Added
The Office is amending rules 1.1, 1.4, 1.5, 1.6, 1.23, 2.1, 2.6,
2.17, 2.20, 2.21, 2.31, 2.32, 2.33, 2.34, 2.35, 2.37, 2.38, 2.39, 2.45,
2.51, 2.52, 2.56, 2.57, 2.58, 2.59, 2.66, 2.71, 2.72, 2.76, 2.86, 2.88,
2.89, 2.101, 2.111, 2.146, 2.151, 2.155, 2.156, 2.160, 2.161, 2.162,
2.163, 2.164, 2.165, 2.166, 2.167, 2.168, 2.173, 2.181, 2.182, 2.183,
2.184, 2.185, 2.186, 3.16, 3.24, 3.25, 3.28, 3.31, and 6.1.
Section 1.1(a)(2) is amended to set forth all the addresses for
filing trademark correspondence in one rule.
Section 1.1(a)(2)(i) is amended to exempt papers filed
electronically from the requirement that correspondence be mailed to
the street address of the Office.
Section 1.1(a)(2)(v) is amended to state that an applicant may
transmit an application for trademark registration electronically, but
only if the applicant uses the Office's electronic form.
Section 1.4(a)(2) is amended to correct a cross-reference.
Section 1.4(d)(1)(iii) is added to provide for signature of
electronically transmitted trademark filings, where permitted.
Section 1.5(c) is amended to clarify the requirements for
identifying trademark applications and registrations.
Section 1.6(a) is amended to provide that the Office will consider
trademark-related correspondence transmitted electronically to have
been filed on the date of transmission, regardless of whether that date
is a Saturday, Sunday, or Federal holiday within the District of
Columbia. This is consistent with the treatment of correspondence filed
as Express Mail with the United States Postal Service (USPS) under
Sec. 1.10.
Comment: One comment suggested that Sec. 1.6(a)(1) be amended to
state that Express Mail deposited on a Saturday, Sunday, or Federal
holiday will receive a filing date as of the date of deposit with the
USPS.
Response: The suggestion has not been adopted. Sections 1.6(a)(2)
and 1.10(a) already state that correspondence filed by Express Mail
will be considered filed as of the date of deposit with USPS, and these
sections do not limit the date of deposit as Express Mail to a day that
is not a weekend or Federal holiday. Therefore, it is not necessary to
repeat this information in Sec. 1.6(a)(1). The Office now stamps
correspondence filed by Express Mail under Sec. 1.10 with the USPS
``date in,'' regardless of whether that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia. TMEP Sec. 702.02(f);
MPEP Sec. 513.
The current text of Sec. 1.23 is designated as paragraph (a), and
amended to clarify that payment must be made in U.S. dollars, and in
the form of a cashier's or certified check, Treasury note, or USPS
money order to be considered unconditional payment of a fee. As with
current practice, payment of a fee by other forms (e.g., by personal or
corporate check, or authorization to charge a credit card) is subject
to actual collection of the fee.
Section 1.23 is also amended to add a paragraph (b), providing that
payments of money for fees in electronically filed trademark
applications, or electronic submissions in trademark applications, may
also be made by credit card. The Office previously limited fee payment
by credit card to the fees required for information products, and will
continue to accept payment of information product fees by credit card.
Section 1.23(b) will also provide that payment of a fee by credit
card must specify the amount to be charged and such other information
as is necessary to process the charge, and is subject to collection of
the fee.
[[Page 48907]]
Section 1.23(b) will further provide that the Office will not
accept a general authorization to charge fees to a credit card. The
Office cannot accept an authorization to charge ``all required fees''
or ``the filing fee'' to a credit card, because the Office cannot
determine with certainty the amount of an unspecified fee (the amount
of the ``required fee'' or the applicable ``filing fee'') within the
time frame for reporting a charge to the credit card company. Also, the
Office cannot accept charges to credit cards that require the use of a
personal identification number (PIN) (e.g., certain debit cards or
check cards).
Section 1.23(b) also contains a warning that if credit card
information is provided on a form or document other than a form
provided by the Office for the payment of fees by credit card, the
Office will not be liable if the credit card number is made public. The
Office currently provides an electronic form for use when paying a fee
in an electronically filed trademark application or electronic
submission in a trademark application. This form will not be included
in the records open to public inspection in the file of a trademark
matter. However, the inclusion of credit card information on forms or
documents other than the electronic form provided by the Office may
result in the release of credit card information.
Section 2.1 is amended to update a cross-reference.
Section 2.6(a)(6) is amended to delete reference to the three-month
renewal grace period. TLTIA changes the grace period to six months.
Section 2.6(a)(14) is removed because it is unnecessary. The cost
of a combined affidavit or declaration under sections 8 and 15 of the
Act is the sum of the cost of the individual filings.
Section 2.6(a)(14) is added, requiring a $100 surcharge per class
for filing a section 8 affidavit during the grace period.
Section 2.6(a)(20) is added, requiring a $100 surcharge for
correcting a deficiency in a section 8 affidavit.
Section 2.6(a)(21) is added, requiring a $100 surcharge for
correcting a deficiency in a renewal application.
Section 2.17(c) is added, stating that to be recognized as a
representative in a trademark case, an attorney as defined in
Sec. 10.1(c) may file a power of attorney, appear in person, or sign a
paper that is filed with the Office on behalf of an applicant or
registrant. This codifies current practice.
Section 2.17(d) is added, stating that someone may file a power of
attorney that relates to more than one trademark application or
registration, or to all existing and future applications and
registrations; and that someone relying on such a power of attorney
must: (1) Include a copy of the previously filed power of attorney; or
(2) refer to the previously filed power of attorney, specifying: The
filing date; the application serial number, registration number, or
inter partes proceeding number for which the original power of attorney
was filed; and the name of the party who signed the power of attorney;
or, if the application serial number is not known, submit a copy of the
application or a copy of the mark, and specify the filing date.
Comment: One comment requested clarification as to whether a
``global'' power of attorney will be effective for all registrations,
including those that have no immediate deadline.
Response: Yes, the power of attorney will be effective for
registrations that have no immediate deadline. When the attorney later
takes an action, such as filing an affidavit of continued use or a
renewal application, he or she must comply with the requirements of
Sec. 2.17(d) in order to rely on the power of attorney.
Comment: One comment asked whether a global power of attorney will
remain valid if the application for which the power was filed is
abandoned.
Response: Yes. The Office will maintain a record of the power of
attorney, and the power will remain valid even if the original power
was filed with an application that is later abandoned, or with a
registration that is later cancelled.
Comment: One comment suggested that the Office should require
attorneys to set forth the jurisdiction in which they are admitted and
their bar number in a power of attorney.
Response: The suggestion has not been adopted, because the Office
does not need this information to process applications and other
documents. The purpose of TLT is to minimize the number of formal
requirements for applications, powers of attorney and other documents,
and to make the procedural requirements of the different national
trademark offices more consistent. Instituting a new requirement that
an attorney include the jurisdiction in which he or she is admitted and
a bar number would not serve this purpose.
Section 2.20 is revised to delete the requirement for a declaration
by a ``member of the firm or an officer of the corporation or
association,'' because this requirement has been deleted from sections
1(a) and 1(b) of the Act.
Comment: One comment suggested that Sec. 2.20 be amended to permit
the use of the language of 28 U.S.C. 1746 in a declaration.
Response: The suggestion has been adopted. Section 2.20 is amended
to permit the filing of a verification under 28 U.S.C. 1746 in lieu of
either an affidavit or a declaration under Sec. 2.20. This reflects
current practice. TMEP Sec. 803.02.
Section 2.21 is revised to require the following minimum
requirements for receipt of an application filing date: (1) The name of
the applicant; (2) a name and address for correspondence; (3) a clear
drawing of the mark; (4) an identification of goods or services; and
(5) the filing fee for at least one class of goods or services. See the
discussion under the heading ``Supplementary Information/Application
Filing Dates,'' supra.
The following minimum requirements for receiving a filing date have
been deleted: A stated basis for filing; a verification or declaration
signed by the applicant; an allegation of use in commerce, specimen,
and date of first use in commerce in an application under section 1(a)
of the Act; an allegation of the applicant's bona fide intention to use
the mark in commerce in an application under section 1(b) or section 44
of the Act; a claim of priority in an application under section 44(d)
of the Act; and a certified copy of a foreign registration in an
application under section 44(e) of the Act. A claim of priority under
section 44(d) must be filed before the end of the priority period. All
other elements must be provided during examination.
Section 2.21(a)(3) is amended to require a ``clear drawing of the
mark'' rather than the drawing ``substantially meeting all the
requirements of Sec. 2.52'' that is now required.
Section 2.21(b) is amended to state that the Office ``may'' rather
than ``will'' return the papers and fees to the applicant when an
application does not meet the minimum filing requirements. A new
procedure is being considered under which the Office would retain
applications that do not meet the minimum filing requirements.
Applicants would have an opportunity to supply the missing element and
receive a filing date as of the date the Office receives the missing
element. Until a new policy is announced, the Office will continue to
return the papers and fees to the applicant.
Comment: One comment stated that it reserves judgment on the
possible future change in procedures for handling informal
applications.
[[Page 48908]]
Response: If the Office does decide to change procedures for
handling informal applications, it will seek input from the public
before instituting the changes.
The center heading ``THE WRITTEN APPLICATION'' before Sec. 2.31 is
deleted because it is unnecessary. The heading ``APPLICATION FOR
REGISTRATION,'' immediately before Sec. 2.21, encompasses the rules
that now fall under the heading ``THE WRITTEN APPLICATION.''
Section 2.31 is removed and reserved. The substance of the
requirement that the application be in English has been moved to
revised Sec. 2.32(a).
The heading of Sec. 2.32 is changed to ``Requirements for a
complete application.'' Revised Sec. 2.32(a) lists the requirements for
the written application, now listed in Sec. 2.33(a)(1).
Proposed Sec. 2.32(a)(3)(ii) required that a juristic applicant set
forth the state or nation under the laws of which the applicant is
organized. This is consistent with current Sec. 2.33(a)(1)(ii).
Comment: One comment suggested that ``state or nation'' in
Sec. 2.32(a)(3)(ii) be changed to ``jurisdiction (usually state or
nation),'' because juristic persons such as corporations may be
incorporated under the law of a jurisdiction that is not a state or
nation.
Response: The suggestion has been adopted.
Section 2.32(a)(6) requires a list of the goods or services on or
in connection with which the applicant uses or intends to use the mark,
and states that in an application filed under section 44 of the Act,
the scope of the goods or services covered by the section 44 basis may
not exceed the scope of the goods or services in the foreign
application or registration.
Comment: One comment suggested that Sec. 2.32(a)(6) be amended to
state than an application may be filed under multiple bases, with some
of the goods/services supported by only one of the bases.
Response: The suggestion has not been adopted because it is
unnecessary. Section 2.34(b)(1) clearly states that an applicant may
claim more than one basis in a single application, and Sec. 2.34(b)(2)
indicates that the goods/services in such an application may be covered
by different bases.
The heading of Sec. 2.33 is changed to ``Verified statement.''
Section 2.33(a) is amended to state that the application must
include a statement that is signed and verified by a person properly
authorized to sign on behalf of the applicant. Section 2.33(a) further
states that a person who is properly authorized to sign on behalf of
the applicant is: (1) A person with legal authority to bind the
applicant; or (2) a person with firsthand knowledge of the facts and
actual or implied authority to act on behalf of the applicant; or (3)
an attorney as defined in Sec. 10.1(c) of this chapter who has an
actual or implied written or verbal power of attorney from the
applicant. See the discussion under the heading ``Supplementary
Information/Persons Who May Sign,'' supra.
The substance of current Sec. 2.32(b) is moved to Sec. 2.33(c).
Revised Sec. 2.33 states that the Office may require a substitute
verification of the applicant's continued use or bona fide intention to
use the mark when the applicant does not file the verified statement
within a reasonable time after the date it is signed. This codifies
present practice. Section 2.32(b) now states only that a verification
of the applicant's continued use of the mark is required where the
application is not filed within a reasonable time after it is signed.
However, the Office also requires verification of the applicant's
continued bona fide intention to use the mark in commerce when a
verification under section 1(b) or section 44 of the Act is not filed
within a reasonable time after it is signed. TMEP Sec. 803.04.
Section 2.33(b)(1) is amended to delete the requirement that the
applicant specify the type of commerce in which the mark is used. See
the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
Section 2.33(d) is added, stating that where an electronically
transmitted filing is permitted, the person who signs the verified
statement must either: (1) Place a symbol comprised of numbers and/or
letters between two forward slash marks in the signature block on the
electronic document; and print, sign and date in permanent ink, and
maintain a paper copy of the electronic submission; or (2) use some
other form of electronic signature that the Commissioner may designate.
Section 2.34 is added, setting forth the requirements for the four
bases for filing. New Sec. 2.34(a)(1) lists the requirements for an
application under section 1(a) of the Act, now listed in section
Secs. 2.21(a)(5)(i), 2.33(a)(1)(iv), 2.33(a)(1)(vii), 2.33(a)(2), and
Sec. 2.33(b)(1). Section 2.34(a)(2) lists the requirements for an
application under section 1(b) of the Act, now listed in
Secs. 2.21(a)(5)(iv) and 2.33(a)(1)(iv).
Section 2.34(a)(iii) is amended to delete the requirement that the
applicant specify the type of commerce in which the mark is used. See
the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
Comment: One comment suggested that Sec. 2.34(a)(1)(i), which
pertains to applications based on use in commerce under section 1(a) of
the Act, be amended to change ``application filing date'' to
``application filing date (in the case of an application claiming
priority under section 44(d), such use in commerce shall be required as
of the U.S. filing date not the filing date of the priority
application),'' to avoid any confusion, because in a section 44(d)
application that claims priority, the effective filing date is the
filing date of the foreign application.
Response: The suggestion has not been adopted, because it is
unnecessary, and could be confusing to domestic applicants who base
their applications solely on use in commerce and are unfamiliar with
the requirements of section 44(d). Under Sec. 1.6, correspondence is
stamped with the date of receipt in the Office, unless the
correspondence is filed under Sec. 1.10, which provides for the filing
of papers and fees by Express Mail. The term ``application filing
date'' is now commonly used to refer to the date the application is
received in the Patent and Trademark Office, and the priority date in a
section 44(d) application is referred to as the ``effective filing
date.'' TMEP Sec. 708.02. The Office knows of no instances in which a
party whose application was based on both sections 44(d) and 1(a)
mistakenly believed that the requirements for the section 1(a) basis
must be met as of the priority date.
Section 2.34(a)(3) lists the requirements for an application under
section 44(e) of the Act, now listed in Secs. 2.21(a)(5)(ii) and
2.33(a)(1)(viii). Section 2.34(a)(3)(ii) requires a certified copy of a
foreign registration. Currently, a section 44(e) applicant must submit
a foreign certificate to receive a filing date. However, TLTIA section
108 amends section 44(e) of the Act to delete the requirement that the
application be ``accompanied by'' the foreign certificate. The Office
will require that the applicant submit the certificate during
examination.
New Sec. 2.34(a)(3)(iii) is added, stating that if it appears that
the foreign registration will expire before the mark in the United
States application will register, the applicant must submit a
certification from the foreign country's trademark office, showing that
the registration has been renewed and will be in force at the time the
United States registration will issue. This codifies current practice.
TMEP Sec. 1004.03.
[[Page 48909]]
Comment: One comment suggested that the phrase ``before the United
States registration will issue,'' be changed to ``before the United
States registration is expected to issue assuming no unusual delays,''
because at the time of examination the exact date of issue is subject
to wide variance.
Response: The suggestion has not been adopted. Even if there is a
delay in issuance of a registration in an application under section
44(e) of the Act, due to an opposition or for other reasons, the United
States registration will not issue unless the foreign registration has
been renewed and is in force.
New Sec. 2.34(a)(4) lists the requirements for an application under
section 44(d) of the Act, now listed in Secs. 2.21(a)(5)(iii),
2.33(a)(1)(ix), and 2.39. Section 2.34(a)(4)(i) requires that a
priority claim be filed within six months of the filing date of the
foreign application. This is consistent with Articles 4(C)(1) and
4(D)(1) of the Paris Convention for the Protection of Industrial
Property, as revised at Stockholm on July 14, 1967 (Paris Convention).
New Sec. 2.34(b)(1) states that an applicant may claim more than
one basis, provided that the applicant meets the requirements for all
bases claimed. This codifies current practice. Section 2.34(b)(1) also
states that the applicant may not claim both sections 1(a) and 1(b) for
the identical goods or services in one application.
Revised Sec. 2.34(b)(2) requires that the applicant specify which
basis covers which goods or services when an applicant claims more than
one basis.
New Sec. 2.34(c) sets forth the definition of ``commerce,''
currently found in Sec. 2.33(a)(3).
Section 2.37 is removed.
Section 2.35 is redesignated as Sec. 2.37.
Section 2.35 is added: ``Adding, deleting, or substituting bases.''
New Sec. 2.35(a) states that the applicant may add or substitute a
basis for registration before publication, and that the applicant may
delete a basis at any time.
Section 2.35(b) is amended to state that an application may be
amended to add or substitute a basis after publication, if the
applicant files a petition to the Commissioner; and that republication
will always be required. This codifies current practice. TMEP
Sec. 1006.04. See the discussion under ``Supplementary Information/
Amendment of Basis After Publication,'' supra.
New Sec. 2.35(c) changes current practice to allow a section 44(d)
applicant to retain the priority filing date when the applicant
substitutes a new basis after the expiration of the six-month priority
period. Currently, if an application is filed solely under section
44(d), and the applicant amends to substitute a different basis after
the expiration of the six-month priority period, the effective filing
date of the application becomes the date the applicant perfects the
amendment claiming the new basis. TMEP Sec. 1006.03.
Comment: Proposed Sec. 2.35(c) stated that when the applicant
substitutes a basis, the Office will presume that the original basis
was valid, unless there is contradictory evidence in the record. One
comment questioned whether an application that was amended from section
1(a) to section 1(b) would be subject to attack on the ground that the
original basis was invalid because there was no use as a mark.
Response: A party who filed an application based on use in
commerce, but later discovered that what he or she thought was
appropriate trademark use was not in fact technical trademark use,
clearly had a bona fide intention to use the mark in commerce as of the
filing date. If the use basis is invalid, the applicant is entitled to
retain the original filing date because the applicant had a bona fide
intention to use the mark in commerce at all times. Section 2.35(c) is
therefore amended to delete the statement that the Office will presume
that the original basis was valid and substitute a statement that the
Office will presume that there was a continuing valid basis, unless
there is contradictory evidence in the record.
New Sec. 2.35(d) states that if an applicant properly claims a
section 44(d) basis in addition to another basis, the applicant will
retain the priority filing date under section 44(d) no matter which
basis the applicant perfects. This codifies current practice. TMEP
Sec. 1006.01.
New Sec. 2.35(e) states that the applicant may add or substitute a
section 44(d) basis only within the six-month priority period following
the filing date of the foreign application. This is consistent with
current practice (TMEP Sec. 1006.05), and with Articles 4(C)(1) and
4(D)(1) of the Paris Convention.
New Sec. 2.35(f) states that an applicant who adds a basis must
state which basis covers which goods or services.
New Sec. 2.35(g) states that if an applicant deletes a basis, the
applicant must also delete any goods or services covered solely by the
deleted basis. This codifies current practice.
New Sec. 2.35(h) states that once an applicant claims a section
1(b) basis as to any or all of the goods or services, the applicant may
not amend the application to seek registration under section 1(a) of
the Act for those goods or services unless the applicant files an
allegation of use under section 1(c) or section 1(d) of the Act.
Section 2.38(a) is amended to update a cross-reference.
Section 2.39 is removed and reserved. The requirements for filing a
priority claim under section 44(d) of the Act are moved to
Sec. 2.34(a)(4), discussed above.
Sections 2.45 (a) and (b) are revised to: (1) Delete the
requirement for a statement of the method or intended method of use in
a certification mark application; and (2) require a copy of the
standards that determine whether others may use the certification mark
on their goods and/or in connection with their services. Sections 1(a)
and 1(b) of the Act, as amended, no longer require a statement of the
method or intended method of use of a mark. The requirement for a copy
of the certification standards codifies current practice. TMEP
Sec. 1306.06(g)(ii).
Sections 2.51 (c) through (e) are removed. The substance of those
rules is moved to new Sec. 2.52.
Section 2.52(a) is revised to define the term ``drawing,'' to
indicate that a drawing may only depict a single mark, and to define
the terms ``typed drawing'' and ``special form drawing.''
Section 2.52(a) is revised to add guidelines for drawings of
various types of unusual marks, such as marks that include color,
three-dimensional objects, motion, sound or scent; and to add
guidelines for showing placement of the mark on goods, packaging for
goods, or in advertising of services.
Section 2.52(b) is revised to indicate the recommended format for
the drawing of a mark.
Section 2.52(c) is revised to state that for an electronically
filed application, if the mark cannot be shown as a ``typed drawing,''
the applicant must attach a digitized image of the mark to the
application.
Sections 2.56, 2.57, and 2.58 are consolidated into Sec. 2.56.
Sections 2.57 and 2.58 are removed and reserved.
Section 2.56(a) is revised to require one rather than three
specimens with an application under section 1(a) of the Act, or an
allegation of use under section 1(c) or section 1(d) of the Act in an
application under section 1(b) of the Act. See the discussion under
``Supplementary Information/Number of Specimens Required,'' supra.
Section 2.56(b)(1) is added, stating that a trademark specimen is a
label, tag, or container for the goods, or a display associated with
the goods; and that the Office may accept another document
[[Page 48910]]
related to the goods or the sale of the goods when it is not possible
to place the mark on the goods or packaging for the goods. This is
consistent with the current Sec. 2.56.
Comment: One comment suggested that the second sentence of
Sec. 2.56(b)(1) should be amended to substitute ``will'' for ``may,''
and that the following sentence be added at the end of the paragraph:
``The Office may accept a display associated with the goods when this
is the customary method of use of a trademark in the relevant trade or
industry.''
Response: The suggestion has not been adopted. The first sentence
of Sec. 2.56(b)(1) already states that a specimen may be a display
associated with the goods, so the suggested third sentence is
unnecessary. The word ``may'' is used in the second sentence of
Sec. 2.56(b)(1) because it is within the discretion of the examining
attorney to determine whether specimens are acceptable.
Section 2.56(b)(2) is added, stating that a service mark specimen
must show the mark as actually used in the sale or advertising of the
services. This is consistent with the current Sec. 2.58(a).
Section 2.56(b)(3) is added, stating that a collective trademark or
collective service mark specimen must show how a member uses the mark
on the member's goods or in the sale or advertising of the member's
services. This codifies current practice. TMEP Sec. 1303.02(b).
Section 2.56(b)(4) is added, stating that a collective membership
mark specimen must show use by members to indicate membership in the
collective organization. This codifies current practice. TMEP
Sec. 1304.09(c).
Section 2.56(b)(5) is added, stating that a certification mark
specimen must show how a person other than the owner uses the mark to
certify regional or other origin, material, mode of manufacture,
quality, accuracy, or other characteristics of the person's goods or
services; or that members of a union or other organization performed
the work or labor on the goods or services. This codifies current
practice. TMEP Sec. 1306.06(c).
Section 2.56(c) is added, stating that a photocopy or other
reproduction of a specimen is acceptable, but that a photocopy or
facsimile that merely reproduces the drawing is not a proper specimen.
This is consistent with the current Sec. 2.57.
New Sec. 2.56(d)(1) states that a specimen must be flat and no
larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.)
long. This is consistent with the current Sec. 2.56.
Section 2.56(d)(2) is added, stating that if the applicant files a
specimen that is too large (a ``bulky specimen''), the Office will
create a facsimile of the specimen that meets the requirements of the
rule (i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by
11.69 inches (29.7 cm.) long) and put it in the file wrapper. See the
discussion under ``Supplementary Information/Bulky Specimens,'' supra.
Section 2.56(d)(4) is added, stating that if the application is
filed electronically, the specimen must be submitted as a digitized
image.
Section 2.59, which governs the filing of substitute specimens, is
revised to clarify and simplify the language. Section 2.59(b)(1)
provides that when an applicant submits substitute specimens after
filing an amendment to allege use under Sec. 2.76, the applicant must
verify the substitute specimens were in use in commerce prior to filing
the amendment to allege use.
Comment: One comment suggested that Sec. 2.59(b)(1) be amended to
provide for the filing of substitute specimens that were in use ``prior
to filing the substitute specimen(s),'' even if the specimens were not
in use as of the filing date of the amendment to allege use. The
comment noted that under the current rule, if the substitute specimens
are not in use as of the filing date of the amendment to allege use,
then the applicant must cancel the first amendment to allege use and
substitute a new one, and stated that this serves no useful purpose.
Response: The suggestion has not been adopted. Section 1(c) of the
Act provides for the filing of an amendment to allege use only after
the applicant ``has made use of the mark in commerce.'' Under
Sec. 2.76(e)(2), a minimum filing requirement for an amendment to
allege use is a specimen showing that the mark is in use in commerce on
or in connection with the goods or services. If the applicant cannot
show use in commerce as of the filing date of the amendment to allege
use, then the amendment cannot be considered ``filed'' as of that date.
The Office believes that its records should accurately show the date
when an intent-to-use applicant files an acceptable amendment to allege
use under section 1(c) of the Act, because this date can be
significant. For example, under Sec. 2.75(b), if an intent-to-use
applicant amends to the Supplemental Register, the effective filing
date of the application becomes the date the amendment to allege use
was perfected. It would be unfair to grant the intent-to-use applicant
an effective filing date on the Supplemental Register before the mark
was actually in use in commerce.
Section 2.66 is revised to set forth the requirements for filing a
petition to revive an abandoned application when the delay in
responding to an Office action or notice of allowance is
``unintentional.'' See the discussion under ``Supplementary
Information/Revival of Abandoned Applications,'' supra.
Sections 2.66(a) (1) and (2) are added, requiring that the
applicant file a petition to revive within (1) two months of the
mailing date of the notice of abandonment; or (2) two months of actual
knowledge of abandonment. Currently, the deadline for filing a petition
to revive is sixty days from the mailing date of the notice of
abandonment or the date of actual knowledge of abandonment. TMEP
Sec. 1112.05(a). The two-month deadline will make it easier to
calculate the due date for a petition because it will not be necessary
to count days.
Section 2.66(a)(2) states that an applicant must be diligent in
checking the status of an application, and that to be diligent, the
applicant must check the status of the application within one year of
the last filing or receipt of a notice from the Office for which
further action by the Office is expected. This codifies current
practice. TMEP sections 413 and 1112.05(b)(ii). See the discussion
under the heading ``Supplementary Information/Due Diligence,'' supra.
Sections 2.66 (b)(2) and (c)(2) are amended to require ``a
statement, signed by someone with firsthand knowledge of the facts,
that the delay * * * was unintentional.'' This statement need not be
verified.
Section 2.66(b)(3) is amended to state that if the applicant did
not receive the Office action, the applicant need not include a
proposed response to an Office action with a petition to revive. This
codifies current practice.
Sections 2.66(c) (3) and (4) are amended to state that if the
applicant did not receive the notice of allowance and requests
cancellation of the notice of allowance, the petition to revive need
not include a statement of use or request for an extension of time to
file a statement of use, or the fees for the extension requests that
would have been due if the application had never been abandoned. This
codifies current practice.
Section 2.66(c)(5) is added, stating that the applicant must file
any further requests for extensions of time to file a statement of use
under Sec. 2.89 that become due while the petition is pending, or file
a statement of use
[[Page 48911]]
unless: (1) A statement of use is filed with or before the petition to
revive, or (2) the petition states that the applicant did not receive
the notice of allowance and requests cancellation of the notice of
allowance. This codifies current practice.
Section 2.66(f)(3) is added, stating that if the Commissioner
denies the petition to revive, the applicant may request
reconsideration by: (1) Filing the request within two months of the
mailing date of the decision denying the petition; and (2) paying a
second petition fee under Sec. 2.6. Currently, the rules do not
specifically provide for requests for reconsideration of petition
decisions, but the Commissioner has the discretion to consider these
requests under Sec. 2.146(a)(3). The Office believes that an additional
fee should be required to pay for the work done in processing the
request for reconsideration. This is consistent with new Sec. 2.146(j).
Section 2.71(a) is revised to state that the applicant may amend
the identification to clarify or limit, but not broaden, the
identification of goods and/or services. This simplifies the language
of the current Sec. 2.71(b).
New Sec. 2.71(b)(1) states that if the declaration or verification
of an application under Sec. 2.33 is unsigned or signed by the wrong
person, the applicant may submit a substitute verification or
declaration under Sec. 2.20. This changes current practice. Currently,
the applicant must submit a signed verification to receive an
application filing date, and if the verification is signed by the wrong
party, the applicant cannot file a substitute verification unless the
party who originally signed had ``color of authority'' (i.e., firsthand
knowledge of the facts and actual or implied authority to act on behalf
of the applicant). TMEP Section 803. As discussed above, the Office is
deleting the requirement that the applicant submit a signed
verification in order to receive a filing date. If the verification is
unsigned or signed by the wrong party, the applicant must replace the
declaration during examination.
The requirement for a verification ``by the applicant, a member of
the applicant firm, or an officer of the applicant corporation or
association'' has been removed from Sec. 2.71(c). This is consistent
with the amendments to sections 1(a) and 1(b) of the Act. See the
discussion under ``Supplementary Information/Persons Who May Sign,''
supra.
The ``color of authority'' provisions have been deleted from
Sec. 2.71(c). Because the statute no longer specifies who has
``statutory'' authority to sign, the ``color of authority'' provisions
are unnecessary.
New Sec. 2.71(b)(2) states that if the declaration or verification
of a statement of use under Sec. 2.88 or a request for extension of
time to file a statement of use under Sec. 2.89 is unsigned or signed
by the wrong party, the applicant must submit a substitute verification
before the expiration of the statutory deadline for filing the
statement of use.
Section 2.71(d) is added, stating that a mistake in setting out the
applicant's name can be corrected, but the application cannot be
amended to set forth a different entity as the applicant; and that an
application filed in the name of an entity that did not own the mark on
the filing date of the application is void. This codifies current
practice. TMEP Sec. 802.07. See the discussion under ``Supplementary
Information/Filing by Owner,'' supra.
Section 2.72 is revised to remove paragraph (a), and redesignate
paragraphs (b) through (d) as (a) through (c).
New paragraphs (a) through (c) will each state that an applicant
may not amend the description or drawing of the mark if the amendment
materially alters the mark; and that the Office will determine whether
a proposed amendment materially alters a mark by comparing the proposed
amendment with the description or drawing of the mark in the original
application. See the discussion under the heading ``Supplementary
Information/Material Alteration,'' supra.
Comment: One comment suggested that Sec. 2.72(b) should be amended
to provide that in an application based on section 1(b) of the Act, the
applicant ``may amend the heading on the drawing to reflect a change in
applicant's name, jurisdiction of citizenship or organization, and/or
address at any time,'' to encourage the prompt amendment of
applications to reflect changes in the applicant's name, address and/or
jurisdiction.
Response: The suggestion has not been adopted because it is
unnecessary. Section 2.72(b) pertains only to amendment of the
``description or drawing of the mark,'' not to amendment of the heading
on a drawing. An applicant who submits a substitute drawing is free to
amend the heading in the substitute drawing.
Comment: One comment suggested that Sec. 2.72(c)(1) be amended to
provide that in an application based on Sec. 44(d) of the Act, the
applicant may amend the drawing of the mark if the amendment is
supported by the foreign application, ``because there may never be a
`foreign registration certificate' if the foreign priority application
lapses.''
Response: The suggestion has not been adopted. Section 44(d) is a
basis for filing an application, not a basis for registration. If the
applicant perfects the section 44(e) basis, the mark in the United
States application must be a substantially exact representation of the
mark in the home country registration. If the applicant elects not to
perfect the section 44(e) basis, the mark in the United States
application must be a substantially exact representation of the mark on
the specimens filed with a section 1(a) application or with an
allegation of use in a section 1(b) application. A mark would not be
registrable if it were a substantially exact representation of the mark
in the foreign application, but not a substantially exact
representation of the mark in the foreign registration in a section
44(e) application, or the specimens in a use-based application.
Section 2.76(b)(1) is revised to state that a complete amendment to
allege use must include a statement that is verified or supported by a
declaration under section 2.20 by a person properly authorized to sign
on behalf of the applicant.
Section 2.76(b)(1) is further revised to delete the requirement for
a statement of the method or manner of use of the mark in an amendment
to allege use, because this requirement has been removed from section
1(a) of the Act.
Section 2.76(b)(1)(ii) is amended to delete the requirement that
the applicant specify the type of commerce in which the mark is used.
See the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
Section 2.76(b)(2) is revised to require one rather than three
specimens with an amendment to allege use.
Section 2.76(i) is added, stating that if an amendment to allege
use is not filed within a reasonable time after it is signed, the
Office may require a substitute verification or declaration under
Sec. 2.20 that the mark is still in use in commerce. This codifies
current practice. TMEP Sec. 803.04.
Section 2.76(j) is added, noting that the requirements for multi-
class applications are stated in Sec. 2.86.
The heading of Sec. 2.86 is changed to ``Application may include
multiple classes.'' The current Sec. 2.86(a), which states that an
applicant may recite more than one item of goods, or more than one
service, in a single class, if the applicant either has used or has a
bona fide intention to use the mark on all the goods or services, is
removed. The
[[Page 48912]]
substance of this provision is moved to Secs. 2.34(a)(1)(v),
2.34(a)(2)(ii), 2.34(a)(3)(iv), and 2.34(a)(4)(iv).
Section 2.86(a) is revised to include sections now found in
Sec. 2.86(b), stating that the applicant may apply to register the same
mark for goods and/or services in multiple classes in a single
application, provided that the applicant specifically identifies the
goods and services in each class; submits a fee for each class; and
either includes dates of use and one specimen, or a statement of a bona
fide intention to use the mark in commerce, for each class.
Section 2.86(a)(3) is amended to add a provision that the applicant
may not claim both use in commerce and a bona fide intention to use the
mark in commerce for the identical goods or services in one
application.
Section 2.86(b) is amended to state that a statement of use or
amendment to allege use must include the required fee, dates of use,
and one specimen for each class.
Section 2.86(b) is amended to add a provision that the applicant
may not file the statement of use or amendment to allege use until the
applicant has used the mark on all the goods or services, unless the
applicant files a request to divide. This is consistent with the
current Secs. 2.76(c) and 2.88(c).
Section 2.86(c), which prohibits an applicant from claiming both
use in commerce and intent-to-use in a single multi-class application,
is deleted. However, new Sec. 2.86(a)(3) will state that the applicant
may not claim both use in commerce and intent-to-use for the identical
goods or services in one application.
The substance of the last sentence of the current Sec. 2.86(b) is
moved to new Sec. 2.86(c).
Section 2.88(b)(1) is revised to state that a complete statement of
use must include a statement that is verified or supported by a
declaration under Sec. 2.20 by a person properly authorized to sign on
behalf of the applicant.
Section 2.88(b)(1) is revised to delete the requirement for a
statement of the method or manner of use in a statement of use. This
requirement has been removed from section 1(d)(1) of the Act.
Section 2.88(b)(1)(ii) is amended to delete the requirement that
the applicant specify the type of commerce in which the mark is used.
See the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
Section 2.88(b)(2) is revised to require one specimen with a
statement of use, rather than the three specimens now required.
Section 2.88(e)(3) is revised to state that if the verification or
declaration is unsigned or signed by the wrong party, the applicant
must submit a substitute verification or declaration on or before the
statutory deadline for filing the statement of use. This is consistent
with current practice. TMEP Sec. 1105.05(f)(i)(A). Section 1(d)(1) of
the Act specifically requires verification by the applicant within the
statutory period for filing the statement of use.
Section 2.88(k) is added, stating that if the statement of use is
not filed within a reasonable time after it is signed, the Office may
require a substitute verification or declaration under Sec. 2.20
stating that the mark is still in use in commerce. This codifies
current practice. TMEP Sec. 803.04.
Section 2.88(l) is added, noting that the requirements for multi-
class applications are stated in Sec. 2.86.
Sections 2.89(a)(3) and (b)(3) are revised to require that the
statement that the applicant has a bona fide intention to use the mark
in commerce in a request for an extension of time to file a statement
of use be verified or supported by a declaration under Sec. 2.20 by a
person properly authorized to sign on behalf of the applicant; and that
if the extension request is unsigned or signed by the wrong party, the
applicant must submit a substitute verification or declaration on or
before the statutory deadline for filing the statement of use. This is
consistent with current practice. TMEP Sec. 1105.05(d). Sections
1(d)(1) and (2) of the Act specifically require verification by the
applicant within the statutory filing period.
Section 2.89(d) is revised to remove paragraph (1), which requires
a statement that the applicant has not yet made use of the mark in
commerce on all the goods and services. The Commissioner has held that
an extension request that omits this allegation is substantially in
compliance with Sec. 2.89(d) if the request contains a statement that
the applicant has a continued bona fide intention to use the mark in
commerce. In re Schering-Plough Healthcare Products Inc., 24 USPQ2d
1709 (Comm'r Pats. 1992). Therefore, the requirement is unnecessary.
Section 2.89(g) is amended to change the time limit for filing a
petition to the Commissioner from the denial of a request for an
extension of time to file a statement of use from one month to two
months. The two-month deadline is consistent with the deadline for
filing a petition to revive an unintentionally abandoned application
under Sec. 2.66, and with the amendment of the deadline for filing
petitions under Sec. 2.146(d).
Section 2.89(h) is added, stating that if the extension request is
not filed within a reasonable time after it is signed, the Office may
require a substitute verification or declaration under Sec. 2.20 that
the applicant still has a bona fide intention to use the mark in
commerce. This codifies current practice. TMEP Sec. 803.04.
Section 2.101(d)(1) is revised to update a cross-reference.
Section 2.111(c)(1) is revised to update a cross-reference.
Section 2.146(d) is revised to delete ``sixty days'' and substitute
``two months'' as the deadline for filing certain petitions. This will
make it easier to calculate the due date for a petition, because it
will not be necessary to count days.
Section 2.146(i) is added, stating that where a petitioner seeks to
reactivate an application or registration that was abandoned or
cancelled due to the loss or mishandling of papers mailed to or from
the Office, the petition will be denied if the petitioner was not
diligent in checking the status of the application or registration; and
that to be considered diligent, the applicant must check the status of
the application or registration within one year of the last filing or
receipt of a notice from the Office for which further action by the
Office is expected. This codifies current practice. TMEP sections 413
and 1704. See the discussion under the heading ``Supplementary
Information/Due Diligence,'' supra.
Section 2.146(j) is added, stating that if the Commissioner denies
the petition, the petitioner may request reconsideration by: (1) Filing
the request within two months of the mailing date of the decision
denying the petition; and (2) paying a second petition fee under
Sec. 2.6. Currently, the rules do not specifically provide for requests
for reconsideration of petition decisions, but the Commissioner has the
discretion to consider these requests under Sec. 2.146(a)(3). The
Office believes that an additional fee should be required to pay for
the work done in processing the request for reconsideration. This is
consistent with new Sec. 2.66(f)(3), discussed above.
Section 2.151 is revised to update a cross-reference and simplify
the language.
Section 2.155 is revised to update a cross-reference and simplify
the language.
Section 2.156 is revised to update a cross-reference and simplify
the language.
[[Page 48913]]
Section 2.160 is added, ``Affidavit or declaration of continued use
or excusable nonuse required to avoid cancellation.'' New
Secs. 2.160(a) (1) and (2) list the deadlines for filing the affidavit
or declaration, and new Sec. 2.160(a)(3) states that the owner may file
the affidavit or declaration within six months after expiration of
these deadlines, with an additional grace period surcharge. Currently,
there is no grace period for filing a section 8 affidavit.
Comment: Since many registrations are still in twenty-year
registration terms, one comment suggested that Sec. 2.160(a)(2) be
amended to require filing of an affidavit or declaration of continued
use or excusable nonuse ``within the year before the end of every ten-
year period after the date of registration or renewal.''
Response: The suggestion has not been adopted. The language of new
Sec. 2.160(a)(2) tracks the language of Sec. 8(a)(3) of the Act.
However, the provisions of section (a)(3) of the Act, requiring the
filing of a section 8 affidavit at the end of each successive ten year
period after registration, do not apply to a twenty-year registration
until a renewal application is due. See the discussion under the
heading ``Dates/Applicability Dates,'' supra.
Comment: One comment suggested that Sec. 2.160(a)(1)(i) should be
amended to require filing ``after the fifth anniversary of the date of
registration and no later than the sixth anniversary of the date of
registration,'' rather than ``between the fifth and sixth year after
the date of registration,'' because the phrase ``between the fifth and
the sixth year'' could be interpreted to be a single day.
Response: The suggestion has been adopted, but modified slightly.
Section 2.160(a)(1)(i) is amended to state that an affidavit of
continued use or excusable nonuse must be filed ``on or after the fifth
anniversary and no later than the sixth anniversary after the date of
registration.'' This makes it clear that the affidavit may be filed on
the fifth anniversary of the registration. A similar amendment is made
to Sec. 2.160(a)(1)(ii).
Comment: One comment suggested that Sec. 2.160(a)(2) be amended to
require filing ``after the ninth anniversary of either the date of
registration or the most recent renewal, and no later than the tenth
anniversary of the date of registration or the date of the most recent
renewal, respectively,'' rather than ``within the year before the end
of every ten-year period after the date of registration,'' because the
``rule as proposed appears to allow the filing of a renewal application
(sic) on the ninth anniversary of the date of registration, which may
not be allowed by the statute.''
Response: The suggestion has not been adopted. The Office will
accept section 8 affidavits filed on either the ninth or the tenth
anniversary after the date of registration. This is consistent with
current practice, which permits the filing of a section 8 affidavit on
either the fifth or the sixth anniversary after the date of
registration. TMEP Sec. 1603.03.
New Sec. 2.160(b) advises that Sec. 2.161 lists the requirements
for the affidavit or declaration.
The heading of Sec. 2.161 is changed to ``Requirements for a
complete affidavit or declaration of continued use or excusable
nonuse.'' Section 2.161 is revised to list the requirements for the
affidavit or declaration.
Section 2.161(a) is revised to state that the owner must file the
affidavit or declaration within the period set forth in section 8 of
the Act.
Comment: One comment suggested that Sec. 2.161(a) be amended to
require that the affidavit ``be filed within the time period set forth
in Sec. 2.160 by the owner, provided that if the owner is an assignee
or other transferee, then such assignment or transfer shall be recorded
with the Office on or before the filing of a section 8 (affidavit), or
within six months after an official action requiring such recordal.''
Response: The suggestion has not been adopted. An assignee is not
required to record the assignment in order to file a section 8
affidavit. Under Sec. 3.73(b), the assignee also has the option of
submitting other proof of the change of ownership (i.e., material
showing the transfer of title). TMEP section 502 and Sec. 1603.05(a).
Section 2.161(b) is revised to state that the affidavit or
declaration must include a verified statement that is signed and
verified (sworn to) or supported by a declaration under Sec. 2.20 by a
person properly authorized to sign on behalf of the owner, attesting to
the continued use or excusable nonuse of the mark within the period set
forth in section 8 of the Act. Section 2.161(b) further states that a
person properly authorized to sign on behalf of the owner is: (1) A
person with legal authority to bind the owner; or (2) a person with
firsthand knowledge of the facts and actual or implied authority to act
on behalf of the owner; or (3) an attorney as defined in Sec. 10.1(c)
of this chapter who has an actual or implied written or verbal power of
attorney from the owner. See the discussion under the heading
``Supplementary Information/Persons Who May Sign,'' supra.
Section 2.161(b) also states that the verified statement must be
executed on or after the beginning of the filing period specified in
Sec. 2.160(a).
Section 2.161(d)(2) is added, requiring a surcharge for filing an
affidavit or declaration of continued use or excusable nonuse during
the grace period.
Section 2.161(d)(3) is added, stating that if the fee submitted is
enough to pay for at least one class, but not enough to pay for all the
classes, and the particular class(es) covered by the affidavit or
declaration are not specified, the Office will issue a notice requiring
either the submission of additional fee(s) or an indication of the
class(es) to which the original fee(s) should be applied; that
additional fee(s) may be submitted if the requirements of Sec. 2.164
are met; and that if additional fees are not submitted and the
class(es) to which the original fee(s) should be applied are not
specified, the Office will presume that the fee(s) cover the classes in
ascending order, beginning with the lowest numbered class.
New Sec. 2.161(e) requires that the affidavit or declaration list
both the goods or services on which the mark is in use in commerce and
the goods or services for which excusable nonuse is claimed. Currently,
a list of the goods or services is not required when excusable nonuse
is claimed. In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993).
However, TLTIA section 105 amends section 8(b)(2) of the Act to
specifically require ``an affidavit setting forth those goods on or in
connection with which the mark is not in use.''
Comment: One comment stated that if the goods for which excusable
nonuse is claimed are not listed in a section 8 affidavit, registrants
should be given the opportunity to correct the oversight.
Response: If the goods or services for which excusable nonuse is
claimed are not listed in an affidavit, the registrant will be given an
opportunity to correct the deficiency. However, because section 8(b)(2)
of the Act specifically requires that the affidavit set forth the goods
or services on or in connection with which the mark is not in use in
commerce, a deficiency surcharge will be required if the deficiency is
corrected after the deadline specified in section 8 of the Act.
The requirement that the affidavit or declaration specify the type
of commerce in which the mark is used, currently required by
Sec. 2.162(e), is removed. See the discussion under the heading
``Supplementary Information/Specification of Type of Commerce No Longer
Required,'' supra.
[[Page 48914]]
The substance of Sec. 2.162(f) is moved to Sec. 2.161(f)(2). New
Sec. 2.161(f)(2) is revised to add a requirement that the affidavit
state the date when use of the mark stopped and the approximate date
when use will resume. This codifies current practice. Office actions
are often issued requiring a statement as to when use of the mark
stopped and when use will resume, because this information is needed to
determine whether the nonuse is excusable, within the meaning of
section 8 of the Act.
The substance of Sec. 2.162(e) is moved to Sec. 2.161(g). New
Sec. 2.161(g) is revised to state that the affidavit must include a
specimen for each class of goods or services; that the specimen should
be no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7
cm.) long; and that if the applicant files a specimen that exceeds
these size requirements (a ``bulky specimen''), the Office will create
a facsimile of the specimen that meets the requirements of the rule
(i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by
11.69 inches (29.7 cm.) long) and put it in the file wrapper. See the
discussion under ``Supplementary Information/Bulky Specimens,'' supra.
Section 2.161(h) is added, requiring a designation of a domestic
representative if the registrant is not domiciled in the United States.
This reflects section 8(f) of the Act, as amended, and is consistent
with current practice.
The substance of Sec. 2.163 is moved to Sec. 2.162. New Sec. 2.162
is revised to state that the only notice of the requirement for filing
the section 8 affidavit or declaration of continued use or excusable
nonuse is sent with the certificate of registration when it is
originally issued. This merely clarifies, and does not change, current
practice.
The substance of current Sec. 2.164 is moved to the introductory
text of new Sec. 2.163.
New Sec. 2.163(a) states that if the owner of the registration
files the affidavit or declaration within the time periods set forth in
section 8 of the Act, deficiencies may be corrected if the requirements
of Sec. 2.164 are met.
Section 2.163(b) is added, stating that a response to an examiner's
Office action must be filed within six months of the mailing date, or
before the end of the filing period set forth in section 8(a) or
section 8(b) of the Act, whichever is later, or the registration will
be cancelled.
Section 2.164 is added, ``Correcting deficiencies in affidavit or
declaration.'' This section changes current practice. There are now
some deficiencies that can be corrected after the statutory deadline
for filing the affidavit or declaration, while other requirements must
be satisfied before the expiration of the statutory deadline to avoid
cancellation of the registration.
TLTIA section 105 adds section 8(c)(2) of the Act to allow
correction of deficiencies, with payment of a deficiency surcharge. The
Act does not define ``deficiency,'' but instead gives the Office broad
discretion to set procedures and fees for correcting deficiencies.
New Sec. 2.164(a)(1) states that if the owner files the affidavit
or declaration within the period set forth in section 8(a) or section
8(b) of the Act, deficiencies can be corrected before the end of this
period without paying a deficiency surcharge; and deficiencies can be
corrected after the expiration of this period with payment of the
deficiency surcharge.
New Sec. 2.164(a)(2) states that if the owner files the affidavit
or declaration during the grace period, deficiencies can be corrected
before the expiration of the grace period without paying a deficiency
surcharge, and after the expiration of the grace period with a
deficiency surcharge.
New Sec. 2.164(b) states that if the affidavit or declaration is
not filed within the time periods set forth in section 8 of the Act, or
if it is filed within that period by someone other than the owner, the
registration will be cancelled. These deficiencies cannot be cured.
See the discussion under the heading ``Supplementary Information/
Post Registration,'' supra, for additional information about curing
deficiencies in section 8 affidavits.
The heading of Sec. 2.165 is changed to ``Petition to Commissioner
to review refusal.'' The last two sentences of the current
Sec. 2.165(a)(1) are removed.
Old Sec. 2.166 is removed because it is unnecessary. New
Secs. 2.163(b) and 2.165(b) set forth the times when a registration
will be cancelled.
New Sec. 2.166 is added, ``Affidavit of continued use or excusable
nonuse combined with renewal application,'' stating that an affidavit
or declaration under section 8 of the Act and a renewal application
under section 9 of the Act may be combined in a single document.
Section 2.167(c) is revised to delete the requirement that an
affidavit or declaration under section 15 of the Act specify the type
of commerce in which the mark is used.
The heading of Sec. 2.168 is changed to ``Affidavit or declaration
under section 15 combined with affidavit or declaration under section
8, or with renewal application.'' Section 2.168(a) is revised to state
that a section 15 affidavit may be combined with a section 8 affidavit,
if the combined affidavit meets the requirements of both sections 8 and
15 of the Act. Section 2.168(b) is revised to state that a section 15
affidavit can be combined with a renewal application under section 9 of
the Act, if the requirements of both sections 9 and 15 of the Act are
met.
Section 2.173(a) is revised to simplify the language.
Sections 2.181(a)(1) and (2) are revised to indicate that renewal
of a registration is subject to the provisions of section 8 of the Act.
This is consistent with the amendment to section 9(a) of the Act.
Comment: One comment suggested that Sec. 2.181(a)(1) should be
amended to provide that registrations remain in force ``from their date
of issue or the date of expiration of their preceding term,'' rather
than ``from their date of issue or expiration,'' because an expired
registration cannot be renewed.
Response: The suggestion has been adopted and modified slightly to
simplify the language. Section 2.181(a)(1) is amended to state that
registrations issued prior to November 16, 1989, remain in force for
twenty years ``from their date of issue or the date of renewal.'' A
similar amendment is made to Sec. 2.181(a)(2).
The heading of Sec. 2.182 is changed to ``Time for filing renewal
application.'' The section is revised to state that the renewal
application must be filed within one year before the expiration date of
the registration, or within the six-month grace period after the
expiration date with an additional fee.
The heading of Sec. 2.183 is changed to ``Requirements for a
complete renewal application.'' This section is revised to delete the
present renewal requirements and substitute new ones based on amended
section 9 of the Act. The requirements for a specimen and declaration
of use or excusable nonuse on or in connection with the goods or
services listed in the registration are removed, because these
requirements have been removed from section 9 of the Act. The new
requirements for renewal are: (1) A request for renewal, signed by the
registrant or the registrant's representative; (2) a renewal fee for
each class; (3) a grace period surcharge for each class if the renewal
application is filed during the grace period; (4) if the registrant is
not domiciled in the United States, a designation of a domestic
representative; and (5) if the renewal application covers less than all
the goods or services, a list of the particular goods or services to be
renewed.
New Sec. 2.183(f) states that if the fee submitted is enough to pay
for at least
[[Page 48915]]
one class, but not enough to pay for all the classes, and the class(es)
covered by the renewal application are not specified, the Office will
issue a notice requiring either the submission of additional fee(s) or
an indication of the class(es) to which the original fee(s) should be
applied; that additional fee(s) may be submitted if the requirements of
Sec. 2.185 are met; and that if the required fee(s) are not submitted
and the class(es) to which the original fee(s) should be applied are
not specified, the Office will presume that the fee(s) cover the
classes in ascending order, beginning with the lowest numbered class.
Section 2.184 is revised to simplify the language and to transfer
some of its provisions to new Sec. 2.186. Section 2.184 states that the
Office will issue a notice if the renewal application is not
acceptable; that a response to the refusal of renewal must be filed
within six months of the mailing date of the Office action, or before
the expiration date of the registration, whichever is later; and that
the registration will expire if the renewal application is not filed
within the time periods set forth in section 9(a) of the Act.
Section 2.185 is added, ``Correcting deficiencies in renewal
application.''
Under amended section 9, the renewal application must be filed
within the renewal period or grace period specified in section 9(a) of
the Act, or the registration will expire. However, if the renewal
application is timely filed, any deficiencies may be corrected after
expiration of the statutory filing period, with payment of a deficiency
surcharge.
New Sec. 2.185(a)(1) states that if the renewal application is
filed within one year before the registration expires, deficiencies may
be corrected before the registration expires without paying a
deficiency surcharge, or after the registration expires with payment of
the deficiency surcharge required by section 9(a) of the Act.
New Sec. 2.185(a)(2) states that if the renewal application is
filed during the grace period, deficiencies may be corrected before the
expiration of the grace period without paying a deficiency surcharge,
and after the expiration of the grace period with payment of the
deficiency surcharge required by section 9(a) of the Act.
New Sec. 2.185(b) states that if the renewal application is not
filed within the time periods set forth in section 9(a) of the Act, the
registration will expire. This deficiency cannot be cured.
Comment: One comment noted that Sec. 2.184(c) appears to be a
duplicate of Sec. 2.185(b) and suggested that one be deleted.
Response: The suggestion has not been adopted. Sections 2.184 and
2.185 are not duplicates, and both are necessary for the following
reason. Section 2.184(c) states the general rule that a registration
will expire if the renewal application is not filed during the proper
time period. Section 2.185(b) specifically addresses whether the
failure to file a renewal application in the proper time period will be
considered a deficiency that can be cured during a six-month deficiency
period. The rule states that ``[t]his deficiency cannot be cured''
(emphasis added).
Section 2.186 is added, ``Petition to Commissioner to review
refusal of renewal.''
New Sec. 2.186(a) states that a response to the examiner's initial
refusal is required before filing a petition to the Commissioner,
unless the examiner directs otherwise. This is consistent with the
current Sec. 2.184(a).
New Sec. 2.186(b) states that if the examiner maintains the refusal
of the renewal application, a petition to the Commissioner to review
the action may be filed within six months of the mailing date of the
Office action maintaining the refusal; and that if no petition is filed
within six months of the mailing date of the Office action, the
registration will expire. This is consistent with the current
Sec. 2.184(b).
New Sec. 2.186(c) states that a decision by the Commissioner is
necessary before filing an appeal or commencing a civil action in any
court. This is consistent with the current Sec. 2.184(d).
Section 3.16 is amended to state that an applicant may assign an
application based on section 1(b) of the Act once the applicant files
an amendment to allege use under section 1(c) of the Act.
The heading of Sec. 3.24 is changed to ``Requirements for documents
and cover sheets relating to patents and patent applications.'' The
recording requirements for patents are listed in Sec. 3.24. New
Sec. 3.25 is added to list the recording requirements for trademark
applications and registrations.
Section 3.25 identifies the types of documents one can submit when
recording documents that affect some interest in trademark applications
or registrations. The section also sets forth the Office's preferred
format for cover sheets and other documents.
Section 3.28 is revised to state that separate cover sheets should
be used for patents and trademarks.
Section 3.31(a)(4) is revised to set forth the requirements for
identifying a trademark application when the application serial number
is not known.
Section 3.31(a)(7) requires that a cover sheet state that the
assignee of a trademark application or registration who is not
domiciled in the United States has designated a domestic
representative. This is consistent with current Sec. 3.31(a)(8).
Comment: One comment suggested that Sec. 3.31(a)(7) be amended to
require that the domestic representative ``either sign the cover sheet
or countersign the indication,'' in order to prevent a foreign assignee
from designating a domestic representative who is unaware of the
designation.
Response: The suggestion has not been adopted. The Office has never
required a domestic representative to countersign a designation or a
cover sheet, and knows of no instances where an assignee or applicant
designated a domestic representative who is not aware of the fact that
he or she has been designated. Instituting a new requirement that a
domestic representative sign each cover sheet could be burdensome to
assignees and is contrary to the goal of minimizing formal requirements
and making the procedural requirements of the different national
trademark offices more consistent.
The requirement currently in Sec. 3.31(a)(9) that a cover sheet
contain a statement that the information on the cover sheet is correct
and that any copy of the document submitted is a true copy is deleted.
Section 3.31(b) is amended to state that a cover sheet should not
refer to both patents and trademarks; and to put the public on notice
that if a cover sheet contains both patent and trademark information,
all information will become public after recordation.
Section 3.31(d) is added, stating that a trademark cover sheet
should include the serial number or registration number of the
trademark affected by the conveyance or transaction, an identification
of the mark, and a description of the mark.
Section 3.31(e) is added, stating that the cover sheet should
include the total number of applications, registrations, or patents
identified on the cover sheet and the total fee.
Section 6.1 is revised to incorporate classification changes that
became effective January 1, 1997, as listed in the International
Classification of Goods and Services for the Purposes of the
Registration of Marks (7th ed. 1996), published by the World
Intellectual Property Organization (WIPO).
Rulemaking Requirements
The Office has determined that the rule changes have no federalism
[[Page 48916]]
implications affecting the relationship between the National Government
and the State as outlined in Executive Order 12612.
The Chief Counsel for Regulation of the Department of Commerce has
certified to the Chief Counsel for Advocacy of the Small Business
Administration, that the rule changes will not have a significant
impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). This rule implements the Trademark
Law Treaty Implementation Act and simplifies and clarifies procedures
for registering trademarks and maintaining and renewing trademark
registrations. The rule will not significantly impact any businesses.
The principal effect of the rule is to make it easier for applicants to
obtain a filing date. No additional requirements are added to maintain
registrations.
Furthermore, this rule simplifies the procedures for registering
trademarks in new Secs. 2.21, 2.32, 2.34, 2.45, 2.76, 2.88, 2.161,
2.167 and 2.183 of the Trademark rules. As a result, an initial
regulatory flexibility analysis was not prepared.
The rule changes are in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et
seq.). No comments were received regarding the certification under the
Regulatory Flexibility Act. The changes have been determined to be not
significant for purposes of Executive Order 12866.
Notwithstanding any other provision of law, no person is required
to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the PRA
unless that collection of information displays a currently valid OMB
control number.
This final rule contains collections of information requirements
subject to the PRA. This rule discusses changes in the information
required from the public to obtain registrations for trademarks and
service marks, to submit affidavits or declarations of continued use or
excusable nonuse, statements of use, requests for extensions of time to
file statements of use, and to renew registrations. This rule deletes
requirements to identify the method of use of a mark and the type of
commerce in which a mark is used. Additionally, the rule removes the
requirement that requests for recordation of documents be accompanied
by originals or true copies of these documents. The rule allows the
filing of powers of attorney that pertain to multiple registrations or
applications for registration, and sets forth certain requirements for
filing such powers of attorney. Additionally, the rule sets forth
requirements for submitting section 8 affidavits of continued use or
excusable nonuse combined with section 9 renewal applications, or
section 15 affidavits or declarations of incontestability combined with
either section 8 affidavits or declarations or with section 9 renewal
applications.
An information collection package supporting the changes to the
above information requirements, as discussed in this final rule, was
submitted to OMB for review and approval. This information collection
has been approved by OMB under OMB Control Number 0651-0009. The public
reporting burden for this collection of information is estimated to
average as follows: Seventeen minutes for applications to obtain
registrations based on an intent to use the mark under section 1(b) of
the Act, if completed using paper forms; fifteen minutes for
applications to obtain registrations based on an intent to use the mark
under section 1(b) of the Act, if completed using an electronic form;
twenty-three minutes for applications to obtain registrations based on
use of the mark under section 1(a) of the Act, if completed using paper
forms; twenty-one minutes for applications to obtain registrations
based on use of the mark under section 1(a) of the Act, if completed
using an electronic form; twenty minutes for applications to obtain
registrations based on an earlier-filed foreign application under
section 44(d) of the Act, if completed using paper forms; nineteen
minutes for applications to obtain registrations based on an earlier-
filed foreign application under section 44(d) of the Act, if completed
using an electronic form; twenty minutes for applications to obtain
registrations based on registration of a mark in a foreign applicant's
country of origin under section 44(e) of the Act; thirteen minutes for
allegations of use of the mark under sections 2.76 and 2.88; ten
minutes for requests for extension of time to file statements of use
under section 2.89; fourteen minutes for renewal applications under
section 9 of the Act combined with affidavits or declarations of
continued use or excusable nonuse under section 8 of the Act; fourteen
minutes for combined affidavits/declarations of use and
incontestability under sections 8 and 15 of the Act; eleven minutes for
an affidavit or declaration of continued use or excusable nonuse under
section 8 of the Act; eleven minutes for a renewal application under
section 9 of the Act; eleven minutes for a declaration of
incontestability under section 15 of the Act; three minutes for powers
of attorney and designations of domestic representatives; and thirty
minutes for a trademark recordation form cover sheet. These time
estimates include the time for reviewing instructions, searching
existing data sources, gathering and maintaining the data needed, and
completing and reviewing the collection of information. Comments are
invited on: (1) Whether the collection of information is necessary for
proper performance of the functions of the agency; (2) the accuracy of
the agency's estimate of the burden; (3) ways to enhance the quality,
utility, and clarity of the information to be collected; and (4) ways
to minimize the burden of the collection of information to respondents.
This final rule also involves information requirements associated
with amendments, oppositions, and petitions to cancel. The amendments
and the oppositions have been previously approved by OMB under control
number 0651-0009. The petitions to cancel have been previously approved
by OMB under control number 0651-0040. These requirements are not being
resubmitted for review at this time. Send comments regarding this
burden estimate, or any other aspect of this data collection, including
suggestions for reducing the burden, to the Assistant Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513 (Attn: Ari
Leifman), and to the Office of Information and Regulatory Affairs,
Office of Management and Budget, 725 17th Street, NW, Washington, DC
20230 (Attn: PTO Desk Officer).
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Patents.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
37 CFR Part 6
Trademarks.
For the reasons given in the preamble and under the authority
contained in 35 U.S.C. 6 and 15 U.S.C. 41, as amended, the Patent and
Trademark Office is amending parts 1, 2, 3, and 6 of title 37 as
follows:
[[Page 48917]]
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for part 1 continues to read as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Amend Sec. 1.1 by revising paragraph (a)(2) to read as follows:
Sec. 1.1 Addresses for correspondence with the Patent and Trademark
Office.
(a) * * *
(2) Trademark correspondence. (i) Send all trademark filings and
correspondence, except as specified below or unless submitting
electronically, to: Assistant Commissioner for Trademarks, 2900 Crystal
Drive, Arlington, Virginia 22202-3513.
(ii) Send trademark-related documents for the Assignment Division
to record to: Commissioner of Patents and Trademarks, Box Assignment,
Washington, DC 20231.
(iii) Send requests for certified or uncertified copies of
trademark applications and registrations, other than coupon orders for
uncertified copies of registrations, to: Commissioner of Patents and
Trademarks, Box 10, Washington, DC 20231.
(iv) Send requests for coupon orders for uncertified copies of
registrations to: Commissioner of Patents and Trademarks, Box 9,
Washington, DC 20231.
(v) An applicant may transmit an application for trademark
registration electronically, but only if the applicant uses the Patent
and Trademark Office's electronic form.
* * * * *
3. Amend Sec. 1.4 by revising the last sentence of paragraph
(a)(2), revising paragraphs (d)(1), introductory text, and (d)(1)(ii),
and adding a new paragraph (d)(1)(iii) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) * * * See particularly the rules relating to the filing,
processing, or other proceedings of national applications in subpart B,
Secs. 1.31 to 1.378; of international applications in subpart C,
Secs. 1.401 to 1.499; of reexamination of patents in subpart D,
Secs. 1.501 to 1.570; of interferences in subpart E, Secs. 1.601 to
1.690; of extension of patent term in subpart F, Secs. 1.710 to 1.785;
and of trademark applications and registrations, Secs. 2.11 to 2.186.
* * * * *
(d)(1) Each piece of correspondence, except as provided in
paragraphs (e) and (f) of this section, filed in an application, patent
file, trademark registration file, or other proceeding in the Office
which requires a person's signature, must:
(i) * * *
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission(Sec. 1.6(d)), of an original. In the event that a copy of
the original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Office may
require submission of the original; or
(iii) Where an electronically transmitted trademark filing is
permitted, the person who signs the filing must either:
(A) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic
submission; and print, sign and date in permanent ink, and maintain a
paper copy of the electronic submission; or
(B) Sign the verified statement using some other form of electronic
signature specified by the Commissioner.
* * * * *
4. Amend Sec. 1.5 by revising paragraph (c) to read as follows:
Sec. 1.5 Identification of application, patent or registration.
* * * * *
(c)(1) A letter about a trademark application should identify the
serial number, the name of the applicant, and the mark.
(2) A letter about a registered trademark should identify the
registration number, the name of the registrant, and the mark.
* * * * *
5. Amend Sec. 1.6 by revising paragraph (a)(1), and adding new
paragraph (a)(4), to read as follows:
Sec. 1.6 Receipt of correspondence.
(a) * * *
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal
holiday within the District of Columbia. Except for correspondence
transmitted by facsimile under paragraph (a)(3) of this section, or
filed electronically under paragraph (a)(4) of this section, no
correspondence is received in the Office on Saturdays, Sundays, or
Federal holidays within the District of Columbia.
* * * * *
(4) Trademark-related correspondence transmitted electronically
will be stamped with the date on which the Office receives the
transmission.
* * * * *
6. Revise Sec. 1.23 to read as follows:
Sec. 1.23 Method of payment.
(a) All payments of money required for Patent and Trademark Office
fees, including fees for the processing of international applications
(Sec. 1.445), shall be made in U.S. dollars and in the form of a
cashier's or certified check, Treasury note, or United States Postal
Service money order. If sent in any other form, the Office may delay or
cancel the credit until collection is made. Checks and money orders
must be made payable to the Commissioner of Patents and Trademarks.
Payments from foreign countries must be payable and immediately
negotiable in the United States for the full amount of the fee
required. Money sent by mail to the Office will be at the risk of the
sender, and letters containing money should be registered with the
United States Postal Service.
(b) Payments of money required for Patent and Trademark Office fees
in an electronically filed trademark application or electronic
submission in a trademark application may also be made by credit card.
Payment of a fee by credit card must specify the amount to be charged
to the credit card and such other information as is necessary to
process the charge, and is subject to collection of the fee. The Office
will not accept a general authorization to charge fees to a credit
card. If credit card information is provided on a form or document
other than a form provided by the Office for the payment of fees by
credit card, the Office will not be liable if the credit card number
becomes public knowledge.
PART 2--RULES APPLICABLE TO TRADEMARK CASES
7. The authority citation for part 2 continues to read as follow:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
8. Revise Sec. 2.1 to read as follows:
Sec. 2.1 Sections of part 1 applicable.
Sections 1.1 to 1.26 of this chapter apply to trademark cases,
except those parts that specifically refer to patents, and except
Sec. 1.22 to the extent that it is inconsistent with Secs. 2.85(e),
2.101(d), 2.111(c), 2.164, or 2.185. Other sections of part 1
incorporated by reference in part 2 also apply to trademark cases.
9. Section 2.6 is amended by revising the introductory text,
paragraphs (a)(6) and (a)(14) and by adding paragraphs (a)(20) and
(a)(21) to read as follows:
[[Page 48918]]
Sec. 2.6 Trademark fees.
The Patent and Trademark Office requires the following fees and
charges:
(a) * * *
(6) Additional fee for filing a renewal application during the grace period, per class............ $100.00
* * * * * * *
(14) Additional fee for filing a section 8 affidavit during the grace period, per class........... $100.00
* * * * * * *
(20) For correcting a deficiency in a section 8 affidavit......................................... $100.00
(21) For correcting a deficiency in a renewal application......................................... $100.00
* * * * *
10. Amend Sec. 2.17 by adding paragraphs (c) and (d) to read as
follows:
Sec. 2.17 Recognition for representation.
* * * * *
(c) To be recognized as a representative, an attorney as defined in
Sec. 10.1(c) of this chapter may file a power of attorney, appear in
person, or sign a paper on behalf of an applicant or registrant that is
filed with the Office in a trademark case.
(d) A party may file a power of attorney that relates to more than
one trademark application or registration, or to all existing and
future applications and registrations of that party. A party relying on
such a power of attorney must:
(1) Include a copy of the previously filed power of attorney; or
(2) Refer to the power of attorney, specifying the filing date of
the previously filed power of attorney; the application serial number
(if known), registration number, or inter partes proceeding number for
which the original power of attorney was filed; and the name of the
party who signed the power of attorney; or, if the application serial
number is not known, submit a copy of the application or a copy of the
mark, and specify the filing date.
11. Revise Sec. 2.20 to read as follows:
Sec. 2.20 Declarations in lieu of oaths.
Instead of an oath, affidavit, verification, or sworn statement,
the language of 28 U.S.C. 1746, or the following language, may be used:
The undersigned being warned that willful false statements and the
like are punishable by fine or imprisonment, or both, under 18
U.S.C. 1001, and that such willful false statements and the like may
jeopardize the validity of the application or document or any
registration resulting therefrom, declares that all statements made
of his/her own knowledge are true; and all statements made on
information and belief are believed to be true.
12. Revise Sec. 2.21 to read as follows:
Sec. 2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application that
contains all of the following:
(1) The name of the applicant;
(2) A name and address for correspondence;
(3) A clear drawing of the mark;
(4) A listing of the goods or services; and
(5) The filing fee for at least one class of goods or services,
required by Sec. 2.6.
(b) If the applicant does not submit all the elements required in
paragraph (a) of this section, the Office may return the papers with an
explanation of why the filing date was denied.
(c) The applicant may correct and resubmit the application papers.
If the resubmitted papers and fee meet all the requirements of
paragraph (a) of this section, the Office will grant a filing date as
of the date the Office receives the corrected papers.
Sec. 2.31 [Removed and reserved]
13. Remove and reserve Sec. 2.31.
14. Revise Sec. 2.32 to read as follows:
Sec. 2.32 Requirements for a complete application.
(a) The application must be in English and include the following:
(1) A request for registration;
(2) The name of the applicant(s);
(3)(i) The citizenship of the applicant(s); or
(ii) If the applicant is a corporation, association, partnership or
other juristic person, the jurisdiction (usually state or nation) under
the laws of which the applicant is organized; and
(iii) If the applicant is a partnership, the names and citizenship
of the general partners;
(4) The address of the applicant;
(5) One or more bases, as required by Sec. 2.34(a);
(6) A list of the particular goods or services on or in connection
with which the applicant uses or intends to use the mark. In a United
States application filed under section 44 of the Act, the scope of the
goods or services covered by the section 44 basis may not exceed the
scope of the goods or services in the foreign application or
registration; and
(7) The international class of goods or services, if known. See
Sec. 6.1 of this chapter for a list of the international classes of
goods and services.
(b) The application must include a verified statement that meets
the requirements of Sec. 2.33.
(c) The application must include a drawing that meets the
requirements of Secs. 2.51 and 2.52.
(d) The application must include fee required by Sec. 2.6 for each
class of goods or services.
(e) For the requirements for a multiple class application, see
Sec. 2.86.
15. Revise Sec. 2.33 to read as follows:
Sec. 2.33 Verified statement.
(a) The application must include a statement that is signed and
verified (sworn to) or supported by a declaration under Sec. 2.20 by a
person properly authorized to sign on behalf of the applicant. A person
who is properly authorized to sign on behalf of the applicant is:
(1) A person with legal authority to bind the applicant; or
(2) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the applicant; or
(3) An attorney as defined in Sec. 10.1(c) of this chapter who has
an actual or implied written or verbal power of attorney from the
applicant.
(b)(1) In an application under section 1(a) of the Act, the
verified statement must allege:
That the applicant has adopted and is using the mark shown in the
accompanying drawing; that the applicant believes it is the owner of
the mark; that the mark is in use in commerce; that to the best of
the declarant's knowledge and belief, no other person has the right
to use the mark in commerce, either in the identical form or in such
near resemblance as to be likely, when applied to the goods or
services of the other person, to cause confusion or mistake, or to
deceive; that the specimen shows the mark
[[Page 48919]]
as used on or in connection with the goods or services; and that the
facts set forth in the application are true.
(2) In an application under section 1(b) or section 44 of the Act,
the verified statement must allege:
That the applicant has a bona fide intention to use the mark shown
in the accompanying drawing in commerce on or in connection with the
specified goods or services; that the applicant believes it is
entitled to use the mark; that to the best of the declarant's
knowledge and belief, no other person has the right to use the mark
in commerce, either in the identical form or in such near
resemblance as to be likely, when applied to the goods or services
of the other person, to cause confusion or mistake, or to deceive;
and that the facts set forth in the application are true.
(c) If the verified statement is not filed within a reasonable time
after it is signed, the Office may require the applicant to submit a
substitute verification or declaration under Sec. 2.20 of the
applicant's continued use or bona fide intention to use the mark in
commerce.
(d) Where an electronically transmitted filing is permitted, the
person who signs the verified statement must either:
(1) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic
submission; and print, sign and date in permanent ink, and maintain a
paper copy of the electronic submission; or
(2) Sign the verified statement using some other form of electronic
signature specified by the Commissioner.
16. Add Sec. 2.34 to read as follows:
Sec. 2.34 Bases for filing.
(a) The application must include one or more of the following four
filing bases:
(1) Use in commerce under section 1(a) of the Act. The requirements
for an application based on section 1(a) of the Act are:
(i) The trademark owner's verified statement that the mark is in
use in commerce on or in connection with the goods or services listed
in the application. If the verification is not filed with the initial
application, the verified statement must allege that the mark was in
use in commerce on or in connection with the goods or services listed
in the application as of the application filing date;
(ii) The date of the applicant's first use of the mark anywhere on
or in connection with the goods or services;
(iii) The date of the applicant's first use of the mark in commerce
as a trademark or service mark; and
(iv) One specimen showing how the applicant actually uses the mark
in commerce.
(v) An application may list more than one item of goods, or more
than one service, provided the applicant has used the mark on or in
connection with all the specified goods or services. The dates of use
required by paragraphs (a)(1) (ii) and (iii) of this section may be for
only one of the items specified.
(2) Intent-to-use under section 1(b) of the Act. (i) In an
application under section 1(b) of the Act, the trademark owner must
verify that it has a bona fide intention to use the mark in commerce on
or in connection with the goods or services listed in the application.
If the verification is not filed with the initial application, the
verified statement must allege that the applicant had a bona fide
intention to use the mark in commerce as of the filing date of the
application.
(ii) The application may list more than one item of goods, or more
than one service, provided the applicant has a bona fide intention to
use the mark in commerce on or in connection with all the specified
goods or services.
(3) Registration of a mark in a foreign applicant's country of
origin under section 44(e) of the Act. The requirements for an
application under section 44(e) of the Act are:
(i) The trademark owner's verified statement that it has a bona
fide intention to use the mark in commerce on or in connection with the
goods or services listed in the application. If the verification is not
filed with the initial application, the verified statement must allege
that the applicant had a bona fide intention to use the mark in
commerce as of the filing date of the application.
(ii) A certification or certified copy of a registration in the
applicant's country of origin showing that the mark has been registered
in that country, and that the registration is in full force and effect.
The certification or certified copy must show the name of the owner,
the mark, and the goods or services for which the mark is registered.
If the certification or certified copy is not in the English language,
the applicant must submit a translation.
(iii) If the record indicates that the foreign registration will
expire before the United States registration will issue, the applicant
must submit a certification or certified copy from the country of
origin to establish that the registration has been renewed and will be
in force at the time the United States registration will issue. If the
certification or certified copy is not in the English language, the
applicant must submit a translation.
(iv) The application may list more than one item of goods, or more
than one service, provided the applicant has a bona fide intention to
use the mark in commerce on or in connection with all the specified
goods or services.
(4) Claim of priority, based upon an earlier-filed foreign
application, under section 44(d) of the Act. The requirements for an
application under section 44(d) of the Act are:
(i) A claim of priority, filed within six months of the filing date
of the foreign application. Before publication or registration on the
Supplemental Register, the applicant must either:
(A) Specify the filing date and country of the first regularly
filed foreign application; or
(B) State that the application is based upon a subsequent regularly
filed application in the same foreign country, and that any prior-filed
application has been withdrawn, abandoned or otherwise disposed of,
without having been laid open to public inspection and without having
any rights outstanding, and has not served as a basis for claiming a
right of priority.
(ii) Include the trademark owner's verified statement that it has a
bona fide intention to use the mark in commerce on or in connection
with the goods or services listed in the application. If the
verification is not filed with the initial application, the verified
statement must allege that the applicant had a bona fide intention to
use the mark in commerce as of the filing date of the application.
(iii) Before the application can be approved for publication, or
for registration on the Supplemental Register, the applicant must
establish a basis under section 1(a), section 1(b) or section 44(e) of
the Act.
(iv) The application may list more than one item of goods, or more
than one service, provided the applicant has a bona fide intention to
use the mark in commerce on or in connection with all the specified
goods or services.
(b)(1) The applicant may claim more than one basis, provided that
the applicant satisfies all requirements for the bases claimed.
However, the applicant may not claim both sections 1(a) and 1(b) for
the identical goods or services in the same application.
(2) If the applicant claims more than one basis, the applicant must
list each basis, followed by the goods or services to which that basis
applies. If some or all of the goods or services are covered by more
than one basis, this must be stated.
(c) The word ``commerce'' means commerce that Congress may lawfully
regulate, as specified in section 45 of the Act.
[[Page 48920]]
Sec. 2.37 [Removed]
17. Remove Sec. 2.37.
Sec. 2.35 [Redesignated as Sec. 2.37]
18. Redesignate Sec. 2.35 as Sec. 2.37.
19. Add new Sec. 2.35, to read as follows:
Sec. 2.35 Adding, deleting, or substituting bases.
(a) Before publication, the applicant may add or substitute a
basis, if the applicant meets all requirements for the new basis, as
stated in Sec. 2.34. The applicant may delete a basis at any time.
(b) An applicant may amend an application that is not the subject
of an inter partes proceeding before the Trademark Trial and Appeal
Board to add or substitute a basis after the mark has been published
for opposition, but only with the express permission of the
Commissioner, after consideration on petition. Republication will be
required. The amendment of an application that is the subject of an
inter partes proceeding before the Board is governed by Sec. 2.133(a).
(c) When the applicant substitutes one basis for another, the
Office will presume that there was a continuing valid basis, unless
there is contradictory evidence in the record, and the application will
retain the original filing date, including a priority filing date under
section 44(d), if appropriate.
(d) If an applicant properly claims a section 44(d) basis in
addition to another basis, the applicant will retain the priority
filing date under section 44(d) no matter which basis the applicant
perfects.
(e) The applicant may add or substitute a section 44(d) basis only
within the six-month priority period following the filing date of the
foreign application.
(f) When the applicant adds or substitutes a basis, the applicant
must list each basis, followed by the goods or services to which that
basis applies.
(g) When the applicant deletes a basis, the applicant must also
delete any goods or services covered solely by the deleted basis.
(h) Once an applicant claims a section 1(b) basis as to any or all
of the goods or services, the applicant may not amend the application
to seek registration under section 1(a) of the Act for those goods or
services unless the applicant files an allegation of use under section
1(c) or section 1(d) of the Act.
20. Amend Sec. 2.38 by revising paragraph (a) to read as follows:
Sec. 2.38 Use by predecessor or by related companies.
(a) If the first use of the mark was by a predecessor in title or
by a related company (sections 5 and 45 of the Act), and the use inures
to the benefit of the applicant, the dates of first use
(Secs. 2.34(a)(1) (ii) and (iii)) may be asserted with a statement that
first use was by the predecessor in title or by the related company, as
appropriate.
* * * * *
Sec. 2.39 [Removed and reserved]
21. Remove and reserve Sec. 2.39.
22. Revise Sec. 2.45 to read as follows:
Sec. 2.45 Certification mark.
(a) In an application to register a certification mark under
section 1(a) of the Act, the application shall include all applicable
elements required by the preceding sections for trademarks. In
addition, the application must: Specify the conditions under which the
certification mark is used; allege that the applicant exercises
legitimate control over the use of the mark; allege that the applicant
is not engaged in the production or marketing of the goods or services
to which the mark is applied; and include a copy of the standards that
determine whether others may use the certification mark on their goods
and/or in connection with their services.
(b) In an application to register a certification mark under
section 1(b) or section 44 of the Act, the application shall include
all applicable elements required by the preceding sections for
trademarks. In addition, the application must: specify the conditions
under which the certification mark is intended to be used; allege that
the applicant intends to exercise legitimate control over the use of
the mark; and allege that the applicant will not engage in the
production or marketing of the goods or services to which the mark is
applied. When the applicant files an amendment to allege use under
section 1(c) of the Act, or a statement of use under section 1(d) of
the Act, the applicant must submit a copy of the standards that
determine whether others may use the certification mark on their goods
and/or in connection with their services.
Sec. 2.51 [Amended]
23. In Sec. 2.51, remove paragraphs (c), (d) and (e).
24. Revise Sec. 2.52 to read as follows:
Sec. 2.52 Types of drawings and format for drawings.
(a) A drawing depicts the mark sought to be registered. The drawing
must show only one mark. The applicant must include a clear drawing of
the mark when the application is filed. There are two types of
drawings:
(1) Typed drawing. The drawing may be typed if the mark consists
only of words, letters, numbers, common forms of punctuation, or any
combination of these elements. In a typed drawing, every word or letter
must be typed in uppercase type. If the applicant submits a typed
drawing, the application is not limited to the mark depicted in any
special form or lettering.
(2) Special form drawing. A special form drawing is required if the
mark has a two or three-dimensional design; or color; or words,
letters, or numbers in a particular style of lettering; or unusual
forms of punctuation.
(i) Special form drawings must be made with a pen or by a process
that will provide high definition when copied. A photolithographic,
printer's proof copy, or other high quality reproduction of the mark
may be used. Every line and letter, including lines used for shading,
must be black. All lines must be clean, sharp, and solid, and must not
be fine or crowded. Gray tones or tints may not be used for surface
shading or any other purpose.
(ii) If necessary to adequately depict the commercial impression of
the mark, the applicant may be required to submit a drawing that shows
the placement of the mark by surrounding the mark with a
proportionately accurate broken-line representation of the particular
goods, packaging, or advertising on which the mark appears. The
applicant must also use broken lines to show any other matter not
claimed as part of the mark. For any drawing using broken lines to
indicate placement of the mark, or matter not claimed as part of the
mark, the applicant must include in the body of the application a
written description of the mark and explain the purpose of the broken
lines.
(iii) If the mark has three-dimensional features, the applicant
must submit a drawing that depicts a single rendition of the mark, and
the applicant must include a description of the mark indicating that
the mark is three-dimensional.
(iv) If the mark has motion, the applicant may submit a drawing
that depicts a single point in the movement, or the applicant may
submit a square drawing that contains up to five freeze frames showing
various points in the movement, whichever best depicts the commercial
impression of the mark. The applicant must also submit a written
description of the mark.
(v) If the mark has color, the applicant may claim that all or part
of the mark consists of one or more colors. To claim color, the
applicant must submit a
[[Page 48921]]
statement explaining where the color or colors appear in the mark and
the nature of the color(s).
(vi) If a drawing cannot adequately depict all significant features
of the mark, the applicant must also submit a written description of
the mark.
(3) Sound, scent, and non-visual marks. The applicant is not
required to submit a drawing if the applicant's mark consists only of a
sound, a scent, or other completely non-visual matter. For these types
of marks, the applicant must submit a detailed written description of
the mark.
(b) Recommended format for special form drawings--(1) Type of paper
and ink. The drawing should be on a piece of non-shiny, white paper
that is separate from the application. Black ink should be used to
depict the mark.
(2) Size of paper and size of mark. The drawing should be on paper
that is 8 to 8\1/2\ inches (20.3 to 21.6 cm.) wide and 11 to 11.69
inches (27.9 to 29.7 cm.) long. One of the shorter sides of the sheet
should be regarded as its top edge. The drawing should be between 2.5
inches (6.1 cm.) and 4 inches (10.3 cm.) high and/or wide. There should
be at least a 1 inch (2.5 cm.) margin between the drawing and the edges
of the paper, and at least a 1 inch (2.5 cm.) margin between the
drawing and the heading.
(3) Heading. Across the top of the drawing, beginning one inch (2.5
cm.) from the top edge, the applicant should type the following:
Applicant's name; applicant's address; the goods or services recited in
the application, or a typical item of the goods or services if numerous
items are recited in the application; the date of first use of the mark
and first use of the mark in commerce in an application under section
1(a) of the Act; the priority filing date of the relevant foreign
application in an application claiming the benefit of a prior foreign
application under section 44(d) of the Act. If the information in the
heading is lengthy, the heading may continue onto a second page, but
the mark should be depicted on the first page.
(c) Drawings in electronically transmitted applications. For an
electronically transmitted application, if the drawing is in special
form, the applicant must attach a digitized image of the mark to the
electronic submission.
25. Revise Sec. 2.56 to read as follows:
Sec. 2.56 Specimens.
(a) An application under section 1(a) of the Act, an amendment to
allege use under Sec. 2.76, and a statement of use under Sec. 2.88 must
each include one specimen showing the mark as used on or in connection
with the goods, or in the sale or advertising of the services in
commerce.
(b)(1) A trademark specimen is a label, tag, or container for the
goods, or a display associated with the goods. The Office may accept
another document related to the goods or the sale of the goods when it
is not possible to place the mark on the goods or packaging for the
goods.
(2) A service mark specimen must show the mark as actually used in
the sale or advertising of the services.
(3) A collective trademark or collective service mark specimen must
show how a member uses the mark on the member's goods or in the sale or
advertising of the member's services.
(4) A collective membership mark specimen must show use by members
to indicate membership in the collective organization.
(5) A certification mark specimen must show how a person other than
the owner uses the mark to certify regional or other origin, material,
mode of manufacture, quality, accuracy, or other characteristics of
that person's goods or services; or that members of a union or other
organization performed the work or labor on the goods or services.
(c) A photocopy or other reproduction of a specimen of the mark as
actually used on or in connection with the goods, or in the sale or
advertising of the services, is acceptable. However, a photocopy of the
drawing required by Sec. 2.51 is not a proper specimen.
(d)(1) The specimen should be flat, and not larger than 8\1/2\
inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen
of this size is not available, the applicant may substitute a suitable
photograph or other facsimile.
(2) If the applicant files a specimen exceeding these size
requirements (a ``bulky specimen''), the Office will create a facsimile
of the specimen that meets the requirements of the rule (i.e., is flat
and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7
cm.) long) and put it in the file wrapper.
(3) In the absence of non-bulky alternatives, the Office may accept
an audio or video cassette tape recording, CD-ROM, or other appropriate
medium.
(4) For an electronically transmitted application, or other
electronic submission, the specimen must be submitted as a digitized
image.
Sec. 2.57 [Removed and reserved]
26. Remove and reserve Sec. 2.57.
Sec. 2.58 [Removed and reserved]
27. Remove and reserve Sec. 2.58.
28. Revise Sec. 2.59 to read as follows:
Sec. 2.59 Filing substitute specimen(s).
(a) In an application under section 1(a) of the Act, the applicant
may submit substitute specimens of the mark as used on or in connection
with the goods, or in the sale or advertising of the services. The
applicant must verify by an affidavit or declaration under Sec. 2.20
that the substitute specimens were in use in commerce at least as early
as the filing date of the application. Verification is not required if
the specimen is a duplicate or facsimile of a specimen already of
record in the application.
(b) In an application under section 1(b) of the Act, after filing
either an amendment to allege use under Sec. 2.76 or a statement of use
under Sec. 2.88, the applicant may submit substitute specimens of the
mark as used on or in connection with the goods, or in the sale or
advertising of the services. If the applicant submits substitute
specimen(s), the applicant must:
(1) For an amendment to allege use under Sec. 2.76, verify by
affidavit or declaration under Sec. 2.20 that the applicant used the
substitute specimen(s) in commerce prior to filing the amendment to
allege use.
(2) For a statement of use under Sec. 2.88, verify by affidavit or
declaration under Sec. 2.20 that the applicant used the substitute
specimen(s) in commerce either prior to filing the statement of use or
prior to the expiration of the deadline for filing the statement of
use.
29. Revise Sec. 2.66 to read as follows:
Sec. 2.66 Revival of abandoned applications.
(a) The applicant may file a petition to revive an application
abandoned because the applicant did not timely respond to an Office
action or notice of allowance, if the delay was unintentional. The
applicant must file the petition:
(1) Within two months of the mailing date of the notice of
abandonment; or
(2) Within two months of actual knowledge of the abandonment, if
the applicant did not receive the notice of abandonment, and the
applicant was diligent in checking the status of the application. To be
diligent, the applicant must check the status of the application within
one year of the last filing or receipt of a notice from the Office for
which further action by the Office is expected.
(b) The requirements for filing a petition to revive an application
abandoned because the applicant did not timely respond to an Office
action are:
(1) The petition fee required by Sec. 2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts,
[[Page 48922]]
that the delay in filing the response on or before the due date was
unintentional; and
(3) Unless the applicant alleges that it did not receive the Office
action, the proposed response.
(c) The requirements for filing a petition to revive an application
abandoned because the applicant did not timely respond to a notice of
allowance are:
(1) The petition fee required by Sec. 2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the statement of use (or request for
extension of time to file a statement of use) on or before the due date
was unintentional;
(3) Unless the applicant alleges that it did not receive the notice
of allowance and requests cancellation of the notice of allowance, the
required fees for the number of requests for extensions of time to file
a statement of use that the applicant should have filed under Sec. 2.89
if the application had never been abandoned;
(4) Unless the applicant alleges that it did not receive the notice
of allowance and requests cancellation of the notice of allowance,
either a statement of use under Sec. 2.88 or a request for an extension
of time to file a statement of use under Sec. 2.89; and
(5) Unless a statement of use is filed with or before the petition,
or the applicant alleges that it did not receive the notice of
allowance and requests cancellation of the notice of allowance, the
applicant must file any further requests for extensions of time to file
a statement of use under Sec. 2.89 that become due while the petition
is pending, or file a statement of use under Sec. 2.88.
(d) In an application under section 1(b) of the Act, the
Commissioner will not grant the petition if this would permit the
filing of a statement of use more than 36 months after the mailing date
of the notice of allowance under section 13(b)(2) of the Act.
(e) The Commissioner will grant the petition to revive if the
applicant complies with the requirements listed above and establishes
that the delay in responding was unintentional.
(f) If the Commissioner denies a petition, the applicant may
request reconsideration, if the applicant:
(1) Files the request within two months of the mailing date of the
decision denying the petition; and
(2) Pays a second petition fee under Sec. 2.6.
30. Revise Sec. 2.71 to read as follows:
Sec. 2.71 Amendments to correct informalities.
The applicant may amend the application during the course of
examination, when required by the Office or for other reasons.
(a) The applicant may amend the application to clarify or limit,
but not to broaden, the identification of goods and/or services.
(b)(1) If the declaration or verification of an application under
Sec. 2.33 is unsigned or signed by the wrong party, the applicant may
submit a substitute verification or declaration under Sec. 2.20.
(2) If the declaration or verification of a statement of use under
Sec. 2.88, or a request for extension of time to file a statement of
use under Sec. 2.89, is unsigned or signed by the wrong party, the
applicant must submit a substitute verification before the expiration
of the statutory deadline for filing the statement of use.
(c) The applicant may amend the dates of use, provided that the
applicant supports the amendment with an affidavit or declaration under
Sec. 2.20, except that the following amendments are not permitted:
(1) In an application under section 1(a) of the Act, the applicant
may not amend the application to specify a date of use that is
subsequent to the filing date of the application;
(2) In an application under section 1(b) of the Act, after filing a
statement of use under Sec. 2.88, the applicant may not amend the
statement of use to specify a date of use that is subsequent to the
expiration of the deadline for filing the statement of use.
(d) The applicant may amend the application to correct the name of
the applicant, if there is a mistake in the manner in which the name of
the applicant is set out in the application. The amendment must be
supported by an affidavit or declaration under Sec. 2.20, signed by the
applicant. However, the application cannot be amended to set forth a
different entity as the applicant. An application filed in the name of
an entity that did not own the mark as of the filing date of the
application is void.
31. Revise Sec. 2.72 to read as follows:
Sec. 2.72 Amendments to description or drawing of the mark.
(a) In an application based on use in commerce under section 1(a)
of the Act, the applicant may amend the description or drawing of the
mark only if:
(1) The specimens originally filed, or substitute specimens filed
under Sec. 2.59(a), support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or
drawing of the mark filed with the original application.
(b) In an application based on a bona fide intention to use a mark
in commerce under section 1(b) of the Act, the applicant may amend the
description or drawing of the mark only if:
(1) The specimens filed with an amendment to allege use or
statement of use, or substitute specimens filed under Sec. 2.59(b),
support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or
drawing of the mark filed with the original application.
(c) In an application based on a claim of priority under section
44(d) of the Act, or on a mark duly registered in the country of origin
of the foreign applicant under section 44(e) of the Act, the applicant
may amend the description or drawing of the mark only if:
(1) The description or drawing of the mark in the foreign
registration certificate supports the amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or
drawing of the mark filed with the original application.
32. Amend Sec. 2.76 by revising paragraphs (b), (e)(2), and (e)(3),
and adding paragraphs (i) and (j) to read as follows:
Sec. 2.76 Amendment to allege use.
* * * * *
(b) A complete amendment to allege use must include:
(1) A statement that is signed and verified (sworn to) or supported
by a declaration under Sec. 2.20 by a person properly authorized to
sign on behalf of the applicant (see Sec. 2.33(a)(2)) that:
(i) The applicant believes it is the owner of the mark; and
(ii) The mark is in use in commerce, specifying the date of the
applicant's first use of the mark and first use of the mark in
commerce, and those goods or services specified in the application on
or in connection with which the applicant uses the mark in commerce.
(2) One specimen of the mark as actually used in commerce. See
Sec. 2.56 for the requirements for specimens; and
(3) The fee per class required by Sec. 2.6.
* * * * *
[[Page 48923]]
(e) * * *
(2) One specimen or facsimile of the mark as used in commerce; and
(3) A statement that is signed and verified (sworn to) or supported
by a declaration under Sec. 2.20 by a person properly authorized to
sign on behalf of the applicant that the mark is in use in commerce.
* * * * *
(i) If the applicant does not file the amendment to allege use
within a reasonable time after it is signed, the Office may require a
substitute verification or declaration under Sec. 2.20 stating that the
mark is still in use in commerce.
(j) For the requirements for a multiple class application, see
Sec. 2.86.
33. Revise Sec. 2.86 to read as follows:
Sec. 2.86 Application may include multiple classes.
(a) In a single application, an applicant may apply to register the
same mark for goods and/or services in multiple classes. The applicant
must:
(1) Specifically identify the goods or services in each class;
(2) Submit an application filing fee for each class; and
(3) Include either dates of use (see Secs. 2.34(a)(1)(ii) and
(iii)) and one specimen for each class, or a statement of a bona fide
intention to use the mark in commerce on or in connection with all the
goods or services specified in each class. The applicant may not claim
both use in commerce and a bona fide intention to use the mark in
commerce for the identical goods or services in one application.
(b) An amendment to allege use under Sec. 2.76 or a statement of
use under Sec. 2.88 must include, for each class, the required fee,
dates of use, and one specimen. The applicant may not file the
amendment to allege use or statement of use until the applicant has
used the mark on all the goods or services, unless the applicant files
a request to divide. See Sec. 2.87 for information regarding requests
to divide.
(c) The Office will issue a single certificate of registration for
the mark, unless the applicant files a request to divide. See Sec. 2.87
for information regarding requests to divide.
34. Amend Sec. 2.88 by revising paragraphs (b) and (e) and by
adding paragraphs (k) and (l) to read as follows:
Sec. 2.88 Filing statement of use after notice of allowance.
* * * * *
(b) A complete statement of use must include:
(1) A statement that is signed and verified (sworn to) or supported
by a declaration under Sec. 2.20 by a person properly authorized to
sign on behalf of the applicant (see Sec. 2.33(a)(2)) that:
(i) The applicant believes it is the owner of the mark; and
(ii) The mark is in use in commerce, specifying the date of the
applicant's first use of the mark and first use of the mark in
commerce, and those goods or services specified in the notice of
allowance on or in connection with which the applicant uses the mark in
commerce;
(2) One specimen of the mark as actually used in commerce. See
Sec. 2.56 for the requirements for specimens; and
(3) The fee per class required by Sec. 2.6.
* * * * *
(e) The Office will review a timely filed statement of use to
determine whether it meets the following minimum requirements:
(1) The fee for at least a single class, required by Sec. 2.6;
(2) One specimen of the mark as used in commerce;
(3) A statement that is signed and verified (sworn to) or supported
by a declaration under Sec. 2.20 by a person properly authorized to
sign on behalf of the applicant that the mark is in use in commerce. If
the verification or declaration is unsigned or signed by the wrong
party, the applicant must submit a substitute verification on or before
the statutory deadline for filing the statement of use.
* * * * *
(k) If the statement of use is not filed within a reasonable time
after the date it is signed, the Office may require a substitute
verification or declaration under Sec. 2.20 stating that the mark is
still in use in commerce.
(l) For the requirements for a multiple class application, see
Sec. 2.86.
35. Amend Sec. 2.89 by revising paragraphs (a), (b), and (d),
amending the fifth sentence of paragraph (g), and by adding paragraph
(h) to read as follows:
Sec. 2.89 Extensions of time for filing a statement of use.
(a) The applicant may request a six-month extension of time to file
the statement of use required by Sec. 2.88. The extension request must
be filed within six months of the mailing date of the notice of
allowance under section 13(b)(2) of the Act and must include the
following:
(1) A written request for an extension of time to file the
statement of use;
(2) The fee per class required by Sec. 2.6; and
(3) A statement that is signed and verified (sworn to) or supported
by a declaration under Sec. 2.20 by a person properly authorized to
sign on behalf of the applicant (see Sec. 2.33(a)(2)) that the
applicant still has a bona fide intention to use the mark in commerce,
specifying the relevant goods or services. If the verification is
unsigned or signed by the wrong party, the applicant must submit a
substitute verification within six months of the mailing date of the
notice of allowance.
(b) Before the expiration of the previously granted extension of
time, the applicant may request further six month extensions of time to
file the statement of use by submitting the following:
(1) A written request for an extension of time to file the
statement of use;
(2) The fee per class required by Sec. 2.6;
(3) A statement that is signed and verified (sworn to) or supported
by a declaration under Sec. 2.20 by a person properly authorized to
sign on behalf of the applicant (see Sec. 2.33(a)(2)) that the
applicant still has a bona fide intention to use the mark in commerce,
specifying the relevant goods or services. If the verification is
unsigned or signed by the wrong party, the applicant must submit a
substitute verification before the expiration of the previously granted
extension; and
(4) A showing of good cause, as specified in paragraph (d) of this
section.
* * * * *
(d) The showing of good cause must include a statement of the
applicant's ongoing efforts to make use of the mark in commerce on or
in connection with each of the relevant goods or services. Those
efforts may include product or service research or development, market
research, manufacturing activities, promotional activities, steps to
acquire distributors, steps to obtain governmental approval, or other
similar activities. In the alternative, the applicant must submit a
satisfactory explanation for the failure to make efforts to use the
mark in commerce.
* * * * *
(g) * * *A petition from the denial of a request for an extension
of time to file a statement of use shall be filed within two months of
the mailing date of the denial of the request. If the petition is
granted, the term of the requested six month extension that was the
subject of the petition will run from the date of the expiration of the
previously existing six month period for filing a statement of use.
(h) If the extension request is not filed within a reasonable time
after it is signed, the Office may require a substitute verification or
declaration under Sec. 2.20 stating that the applicant
[[Page 48924]]
still has a bona fide intention to use the mark in commerce.
36. Amend Sec. 2.101 by revising paragraph (d)(1) to read as
follows:
Sec. 2.101 Filing an opposition.
* * * * *
(d)(1) The opposition must be accompanied by the required fee for
each party joined as opposer for each class in the application for
which registration is opposed (see Sec. 2.6). If no fee, or a fee
insufficient to pay for one person to oppose the registration of a mark
in at least one class, is submitted within thirty days after
publication of the mark to be opposed or within an extension of time
for filing an opposition, the opposition will not be refused if the
required fee(s) is submitted to the Patent and Trademark Office within
the time limit set in the notification of this defect by the Office.
* * * * *
37. Amend Sec. 2.111 by revising paragraph (c)(1) to read as
follows:
Sec. 2.111 Filing petition for cancellation.
* * * * *
(c)(1) The petition must be accompanied by the required fee for
each class in the registration for which cancellation is sought (see
Sec. 2.6). If the fee submitted is insufficient for a cancellation
against all of the classes in the registration, and the particular
class or classes against which the cancellation is filed are not
specified, the Office will issue a written notice allowing petitioner a
set time in which to submit the required fees(s) (provided that the
five-year period, if applicable, has not expired) or to specify the
class or classes sought to be cancelled. If the required fee(s) is not
submitted, or the specification made, within the time set in the
notice, the cancellation will be presumed to be against the class or
classes in ascending order, beginning with the lowest numbered class,
and including the number of classes in the registration for which the
fees submitted are sufficient to pay the fee due for each class.
* * * * *
38. Amend Sec. 2.146 by revising paragraph (d) and by adding
paragraphs (i) and (j) to read as follows:
Sec. 2.146 Petitions to the Commissioner.
* * * * *
(d) A petition must be filed within two months of the mailing date
of the action from which relief is requested, unless a different
deadline is specified elsewhere in this chapter.
* * * * *
(i) Where a petitioner seeks to reactivate an application or
registration that was abandoned or cancelled because papers were lost
or mishandled, the Commissioner may deny the petition if the petitioner
was not diligent in checking the status of the application or
registration. To be considered diligent, the applicant must check the
status of the application or registration within one year of the last
filing or receipt of a notice from the Office for which further action
by the Office is expected.
(j) If the Commissioner denies a petition, the petitioner may
request reconsideration, if the petitioner:
(1) Files the request within two months of the mailing date of the
decision denying the petition; and
(2) Pays a second petition fee under Sec. 2.6.
39. Revise Sec. 2.151 to read as follows:
Sec. 2.151 Certificate.
When the Office determines that a mark is registrable, a
certificate will be issued stating that the applicant is entitled to
registration on the Principal Register or on the Supplemental Register.
The certificate will state the date on which the application for
registration was filed in the Office, the act under which the mark is
registered, the date of issue, and the number of the registration. A
reproduction of the mark and pertinent data from the application will
be sent with the certificate. A notice of the requirements of section 8
of the Act will accompany the certificate.
40. Revise Sec. 2.155 to read as follows:
Sec. 2.155 Notice of publication.
The Office will send the registrant a notice of publication of the
mark and of the requirement for filing the affidavit or declaration
required by section 8 of the Act.
41. Revise Sec. 2.156 to read as follows:
Sec. 2.156 Not subject to opposition; subject to cancellation.
The published mark is not subject to opposition, but is subject to
petitions to cancel as specified in Sec. 2.111 and to cancellation for
failure to file the affidavit or declaration required by section 8 of
the Act.
42. Add Sec. 2.160 to read as follows:
Sec. 2.160 Affidavit or declaration of continued use or excusable
nonuse required to avoid cancellation of registration.
(a) During the following time periods, the owner of the
registration must file an affidavit or declaration of continued use or
excusable nonuse, or the registration will be cancelled:
(1)(i) For registrations issued under the Trademark Act of 1946, on
or after the fifth anniversary and no later than the sixth anniversary
after the date of registration; or
(ii) For registrations issued under prior Acts, on or after the
fifth anniversary and no later than the sixth anniversary after the
date of publication under section 12(c) of the Act; and
(2) For all registrations, within the year before the end of every
ten-year period after the date of registration.
(3) The affidavit or declaration may be filed within a grace period
of six months after the end of the deadline set forth in paragraphs
(a)(1) and (a)(2) of this section, with payment of the grace period
surcharge required by section 8(c)(1) of the Act and Sec. 2.6.
(b) For the requirements for the affidavit or declaration, see
Sec. 2.161.
43. Revise Sec. 2.161 to read as follows:
Sec. 2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
A complete affidavit or declaration under section 8 of the Act
must:
(a) Be filed by the owner within the period set forth in
Sec. 2.160(a);
(b) Include a statement that is signed and verified (sworn to) or
supported by a declaration under Sec. 2.20 by a person properly
authorized to sign on behalf of the owner, attesting to the continued
use or excusable nonuse of the mark within the period set forth in
section 8 of the Act. The verified statement must be executed on or
after the beginning of the filing period specified in Sec. 2.160(a). A
person who is properly authorized to sign on behalf of the owner is:
(1) A person with legal authority to bind the owner; or
(2) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the owner; or
(3) An attorney as defined in Sec. 10.1(c) of this chapter who has
an actual or implied written or verbal power of attorney from the
owner.
(c) Include the registration number;
(d)(1) Include the fee required by Sec. 2.6 for each class of goods
or services that the affidavit or declaration covers;
(2) If the affidavit or declaration is filed during the grace
period under section 8(c)(1) of the Act, include the late fee per class
required by Sec. 2.6;
(3) If at least one fee is submitted for a multi-class
registration, but the class(es) to which the fee(s) should be applied
are not specified, the Office will issue a notice requiring either the
submission of additional fee(s) or an indication of the class(es) to
which the original fee(s) should be applied. Additional fee(s) may be
submitted if the requirements of Sec. 2.164 are met. If
[[Page 48925]]
the required fee(s) are not submitted and the class(es) to which the
original fee(s) should be applied are not specified, the Office will
presume that the fee(s) cover the classes in ascending order, beginning
with the lowest numbered class;
(e)(1) Specify the goods or services for which the mark is in use
in commerce, and/or the goods or services for which excusable nonuse is
claimed under Sec. 2.161(f)(2);
(2) If the affidavit or declaration covers less than all the goods
or services, or less than all the classes in the registration, specify
the goods or services being deleted from the registration;
(f)(1) State that the registered mark is in use in commerce on or
in connection with the goods or services in the registration; or
(2) If the registered mark is not in use in commerce on or in
connection with all the goods or services in the registration, set
forth the date when use of the mark in commerce stopped and the
approximate date when use is expected to resume; and recite facts to
show that nonuse as to those goods or services is due to special
circumstances that excuse the nonuse and is not due to an intention to
abandon the mark;
(g) Include a specimen showing current use of the mark for each
class of goods or services, unless excusable nonuse is claimed under
Sec. 2.161(f)(2). The specimen must:
(1) Show the mark as actually used on or in connection with the
goods or in the sale or advertising of the services. A photocopy or
other reproduction of the specimen showing the mark as actually used is
acceptable. However, a photocopy that merely reproduces the
registration certificate is not a proper specimen;
(2) Be flat and no larger than 8\1/2\ inches (21.6 cm.) wide by
11.69 inches (29.7 cm.) long. If a specimen exceeds these size
requirements (a ``bulky specimen''), the Office will create a facsimile
of the specimen that meets the requirements of the rule (i.e., is flat
and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7
cm.) long) and put it in the file wrapper;
(h) If the registrant is not domiciled in the United States, the
registrant must list the name and address of a United States resident
upon whom notices or process in proceedings affecting the registration
may be served.
44. Revise Sec. 2.162 to read as follows:
Sec. 2.162 Notice to registrant.
When a certificate of registration is originally issued, the Office
includes a notice of the requirement for filing the affidavit or
declaration of use or excusable nonuse under section 8 of the Act.
However the affidavit or declaration must be filed within the time
period required by section 8 of the Act even if this notice is not
received.
45. Revise Sec. 2.163 to read as follows:
Sec. 2.163 Acknowledgment of receipt of affidavit or declaration.
The Office will issue a notice as to whether an affidavit or
declaration is acceptable, or the reasons for refusal.
(a) If the owner of the registration filed the affidavit or
declaration within the time periods set forth in section 8 of the Act,
deficiencies may be corrected if the requirements of Sec. 2.164 are
met.
(b) A response to the refusal must be filed within six months of
the mailing date of the Office action, or before the end of the filing
period set forth in section 8(a) or section 8(b) of the Act, whichever
is later. If no response is filed within this time period, the
registration will be cancelled.
46. Revise Sec. 2.164 to read as follows:
Sec. 2.164 Correcting deficiencies in affidavit or declaration.
(a) If the owner of the registration files an affidavit or
declaration within the time periods set forth in section 8 of the Act,
deficiencies may be corrected, as follows:
(1) Correcting deficiencies in affidavits or declarations timely
filed within the periods set forth in sections 8(a) and 8(b) of the
Act. If the owner timely files the affidavit or declaration within the
relevant filing period set forth in section 8(a) or section 8(b) of the
Act, deficiencies may be corrected before the end of this filing period
without paying a deficiency surcharge. Deficiencies may be corrected
after the end of this filing period with payment of the deficiency
surcharge required by section 8(c)(2) of the Act and Sec. 2.6.
(2) Correcting deficiencies in affidavits or declarations filed
during the grace period. If the affidavit or declaration is filed
during the six-month grace period provided by section 8(c)(1) of the
Act, deficiencies may be corrected before the expiration of the grace
period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of the
deficiency surcharge required by section 8(c)(2) of the Act and
Sec. 2.6.
(b) If the affidavit or declaration is not filed within the time
periods set forth in section 8 of the Act, or if it is filed within
that period by someone other than the owner, the registration will be
cancelled. These deficiencies cannot be cured.
47. Revise Sec. 2.165 to read as follows:
Sec. 2.165 Petition to Commissioner to review refusal.
(a) A response to the examiner's initial refusal to accept an
affidavit or declaration is required before filing a petition to the
Commissioner, unless the examiner directs otherwise. See Sec. 2.163(b)
for the deadline for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, a petition to the Commissioner to review the action may be
filed. The petition must be filed within six months of the mailing date
of the action maintaining the refusal, or the Office will cancel the
registration and issue a notice of the cancellation.
(c) A decision by the Commissioner is necessary before filing an
appeal or commencing a civil action in any court.
48. Revise Sec. 2.166 to read as follows:
Sec. 2.166 Affidavit of continued use or excusable nonuse combined
with renewal application.
An affidavit or declaration under section 8 of the Act and a
renewal application under section 9 of the Act may be combined into a
single document, provided that the document meets the requirements of
both sections 8 and 9 of the Act.
49. Amend Sec. 2.167 by revising paragraph (c) to read as follows:
Sec. 2.167 Affidavit or declaration under section 15.
* * * * *
(c) Recite the goods or services stated in the registration on or
in connection with which the mark has been in continuous use in
commerce for a period of five years after the date of registration or
date of publication under section 12(c) of the Act, and is still in use
in commerce;
* * * * *
50. Revise Sec. 2.168 to read as follows:
Sec. 2.168 Affidavit or declaration under section 15 combined with
affidavit or declaration under section 8, or with renewal application.
(a) The affidavit or declaration filed under section 15 of the Act
may also be used as the affidavit or declaration required by section 8,
if the affidavit or declaration meets the requirements of both sections
8 and 15.
(b) The affidavit or declaration filed under section 15 of the Act
may be combined with an application for renewal of a registration under
section 9 of the Act, if the requirements of both sections 9 and 15 are
met.
[[Page 48926]]
51. Amend Sec. 2.173 by revising the heading and paragraph (a) to
read as follows:
Sec. 2.173 Amendment of registration.
(a) The registrant may apply to amend the registration or to
disclaim part of the mark in the registration. A written request
specifying the amendment or disclaimer must be submitted. The request
must be signed by the registrant and verified or supported by a
declaration under Sec. 2.20, and accompanied by the required fee. If
the amendment involves a change in the mark, a new specimen showing the
mark as used on or in connection with the goods or services, and a new
drawing of the amended mark, must be submitted. The certificate of
registration or, if the certificate is lost or destroyed, a certified
copy of the certificate, must also be submitted. The registration as
amended must still contain registrable matter, and the mark as amended
must be registrable as a whole. An amendment or disclaimer must not
materially alter the character of the mark.
* * * * *
52. Amend Sec. 2.181 by revising paragraph (a) to read as follows:
Sec. 2.181 Term of original registrations and renewals.
(a)(1) Subject to the provisions of section 8 of the Act requiring
an affidavit or declaration of continued use or excusable nonuse,
registrations issued or renewed prior to November 16, 1989, whether on
the Principal Register or on the Supplemental Register, remain in force
for twenty years from their date of issue or the date of renewal, and
may be further renewed for periods of ten years, unless previously
cancelled or surrendered.
(2) Subject to the provisions of section 8 of the Act requiring an
affidavit or declaration of continued use or excusable nonuse,
registrations issued or renewed on or after November 16, 1989, whether
on the Principal Register or on the Supplemental Register, remain in
force for ten years from their date of issue or the date of renewal,
and may be further renewed for periods of ten years, unless previously
cancelled or surrendered.
* * * * *
53. Revise Sec. 2.182 to read as follows:
Sec. 2.182 Time for filing renewal application.
An application for renewal must be filed within one year before the
expiration date of the registration, or within the six-month grace
period after the expiration date of the registration. If no renewal
application is filed within this period, the registration will expire.
54. Revise Sec. 2.183 to read as follows:
Sec. 2.183 Requirements for a complete renewal application.
A complete renewal application must include:
(a) A request for renewal of the registration, signed by the
registrant or the registrant's representative;
(b) The fee required by Sec. 2.6 for each class;
(c) The additional fee required by Sec. 2.6 for each class if the
renewal application is filed during the six-month grace period set
forth in section 9(a) of the Act;
(d) If the registrant is not domiciled in the United States, the
name and address of a United States resident on whom notices or process
in proceedings affecting the registration may be served; and
(e) If the renewal application covers less than all the goods or
services in the registration, a list of the particular goods or
services to be renewed.
(f) If at least one fee is submitted for a multi-class
registration, but the class(es) to which the fee(s) should be applied
are not specified, the Office will issue a notice requiring either the
submission of additional fee(s) or an indication of the class(es) to
which the original fee(s) should be applied. Additional fee(s) may be
submitted if the requirements of Sec. 2.185 are met. If the required
fee(s) are not submitted and the class(es) to which the original fee(s)
should be applied are not specified, the Office will presume that the
fee(s) cover the classes in ascending order, beginning with the lowest
numbered class.
55. Revise Sec. 2.184 to read as follows:
Sec. 2.184 Refusal of renewal.
(a) If the renewal application is not acceptable, the Office will
issue a notice stating the reason(s) for refusal.
(b) A response to the refusal of renewal must be filed within six
months of the mailing date of the Office action, or before the
expiration date of the registration, whichever is later, or the
registration will expire.
(c) If the renewal application is not filed within the time periods
set forth in section 9(a) of the Act, the registration will expire.
56. Add Sec. 2.185 to read as follows:
Sec. 2.185 Correcting deficiencies in renewal application.
(a) If the renewal application is filed within the time periods set
forth in section 9(a) of the Act, deficiencies may be corrected, as
follows:
(1) Correcting deficiencies in renewal applications filed within
one year before the expiration date of the registration. If the renewal
application is filed within one year before the expiration date of the
registration, deficiencies may be corrected before the expiration date
of the registration without paying a deficiency surcharge. Deficiencies
may be corrected after the expiration date of the registration with
payment of the deficiency surcharge required by section 9(a) of the Act
and Sec. 2.6.
(2) Correcting deficiencies in renewal applications filed during
the grace period. If the renewal application is filed during the six-
month grace period, deficiencies may be corrected before the expiration
of the grace period without paying a deficiency surcharge. Deficiencies
may be corrected after the expiration of the grace period with payment
of the deficiency surcharge required by section 9(a) of the Act and
Sec. 2.6.
(b) If the renewal application is not filed within the time periods
set forth in section 9(a) of the Act, the registration will expire.
This deficiency cannot be cured.
57. Add Sec. 2.186 to read as follows:
Sec. 2.186 Petition to Commissioner to review refusal of renewal.
(a) A response to the examiner's initial refusal of the renewal
application is required before filing a petition to the Commissioner,
unless the examiner directs otherwise. See Sec. 2.184(b) for the
deadline for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the renewal
application, a petition to the Commissioner to review the refusal may
be filed. The petition must be filed within six months of the mailing
date of the Office action maintaining the refusal, or the renewal
application will be abandoned and the registration will expire.
(c) A decision by the Commissioner is necessary before filing an
appeal or commencing a civil action in any court.
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
58. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
59. Revise Sec. 3.16 to read as follows:
Sec. 3.16 Assignability of trademarks prior to filing of an allegation
of use.
Before an allegation of use under either 15 U.S.C. 1051(c) or 15
U.S.C. 1051(d) is filed, an applicant may only assign an application to
register a mark
[[Page 48927]]
under 15 U.S.C. 1051(b) to a successor to the applicant's business, or
portion of the business to which the mark pertains, if that business is
ongoing and existing.
60. Amend Sec. 3.24 by revising the heading to read as follows:
Sec. 3.24 Requirements for documents and cover sheets relating to
patents and patent applications.
* * * * *
61. Add Sec. 3.25 to read as follows:
Sec. 3.25 Recording requirements for trademark applications and
registrations.
(a) Documents affecting title. To record documents affecting title
to a trademark application or registration, a legible cover sheet (see
Sec. 3.31) and one of the following must be submitted:
(1) The original document;
(2) A copy of the document;
(3) A copy of an extract from the document evidencing the effect on
title; or
(4) A statement signed by both the party conveying the interest and
the party receiving the interest explaining how the conveyance affects
title.
(b) Name changes. Only a legible cover sheet is required (See
Sec. 3.31).
(c) All documents. All documents submitted to the Office should be
on white and non-shiny paper that is no larger than 8\1/2\ x 14
inches (21.6 x 33.1 cm.) with a one-inch (2.5 cm) margin on all
sides. Only one side of each page should be used.
62. Revise Sec. 3.28 to read as follows:
Sec. 3.28 Requests for recording.
Each document submitted to the Office for recording must include at
least one cover sheet as specified in Sec. 3.31 referring either to
those patent applications and patents, or to those trademark
applications and registrations, against which the document is to be
recorded. If a document to be recorded includes interests in, or
transactions involving, both patents and trademarks, separate patent
and trademark cover sheets should be submitted. Only one set of
documents and cover sheets to be recorded should be filed. If a
document to be recorded is not accompanied by a completed cover sheet,
the document and the incomplete cover sheet will be returned pursuant
to Sec. 3.51 for proper completion. The document and a completed cover
sheet should be resubmitted.
63. Amend Sec. 3.31 by revising paragraphs (a) and (b) and by
adding paragraphs (d) and (e) to read as follows:
Sec. 3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by Sec. 3.28 must
contain:
(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be
recorded;
(4) Identification of the interests involved:
(i) For trademark assignments and trademark name changes: Each
trademark registration number and each trademark application number, if
known, against which the Office is to record the document. If the
trademark application number is not known, a copy of the application or
a reproduction of the trademark must be submitted, along with an
estimate of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or
patent application, registration or patent: Each trademark or patent
application number or each trademark registration number or patent
against which the document is to be recorded, or an indication that the
document is filed together with a patent application;
(5) The name and address of the party to whom correspondence
concerning the request to record the document should be mailed;
(6) The date the document was executed;
(7) An indication that the assignee of a trademark application or
registration who is not domiciled in the United States has designated a
domestic representative (see Sec. 3.61); and
(8) The signature of the party submitting the document.
(b) A cover sheet should not refer to both patents and trademarks,
since any information, including information about pending patent
applications, submitted with a request for recordation of a document
against a trademark application or trademark registration will become
public record upon recordation.
* * * * *
(d) Each trademark cover sheet required by Sec. 3.28 seeking to
record a document against a trademark application or registration
should include, in addition to the serial number or registration number
of the trademark, identification of the trademark or a description of
the trademark, against which the Office is to record the document.
(e) Each patent or trademark cover sheet required by Sec. 3.28
should contain the number of applications, patents or registrations
identified in the cover sheet and the total fee.
PART 6--CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK
ACT
64. The authority citation for part 6 continues to read as follows:
Authority: 15 U.S.C. 1112, 1123; 35 U.S.C. 6, unless otherwise
noted.
65. Revise Sec. 6.1 to read as follows:
Sec. 6.1 International schedule of classes of goods and services.
Goods
1. Chemicals used in industry, science and photography, as well
as in agriculture, horticulture and forestry; unprocessed artificial
resins; unprocessed plastics; manures; fire extinguishing
compositions; tempering and soldering preparations; chemical
substances for preserving foodstuffs; tanning substances; adhesives
used in industry.
2. Paints, varnishes, lacquers; preservatives against rust and
against deterioration of wood; colorants; mordants; raw natural
resins; metals in foil and powder form for painters, decorators,
printers and artists.
3. Bleaching preparations and other substances for laundry use;
cleaning, polishing, scouring and abrasive preparations; soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices.
4. Industrial oils and greases; lubricants; dust absorbing,
wetting and binding compositions; fuels (including motor spirit) and
illuminants; candles, wicks.
5. Pharmaceutical, veterinary, and sanitary preparations;
dietetic substances adapted for medical use, food for babies;
plasters, materials for dressings; material for stopping teeth,
dental wax; disinfectants; preparations for destroying vermin;
fungicides, herbicides.
6. Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway
tracks; nonelectric cables and wires of common metal; ironmongery,
small items of metal hardware; pipes and tubes of metal; safes;
goods of common metal not included in other classes; ores.
7. Machines and machine tools; motors and engines (except for
land vehicles); machine coupling and transmission components (except
for land vehicles); agricultural implements other than hand-
operated; incubators for eggs.
8. Hand tools and implements (hand-operated); cutlery; side
arms; razors.
9. Scientific, nautical, surveying, electric, photographic,
cinematographic, optical, weighing, measuring, signalling, checking
(supervision), life-saving and teaching apparatus and instruments;
apparatus for recording, transmission or reproduction of sound or
images; magnetic data carriers, recording discs; automatic vending
machines and mechanisms for coin operated apparatus; cash registers,
calculating machines, data processing equipment and computers; fire
extinguishing apparatus.
10. Surgical, medical, dental, and veterinary apparatus and
instruments, artificial limbs, eyes, and teeth; orthopedic articles;
suture materials.
[[Page 48928]]
11. Apparatus for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply, and sanitary
purposes.
12. Vehicles; apparatus for locomotion by land, air, or water.
13. Firearms; ammunition and projectiles; explosives; fireworks.
14. Precious metals and their alloys and goods in precious
metals or coated therewith, not included in other classes; jewelry,
precious stones; horological and chronometric instruments.
15. Musical instruments.
16. Paper, cardboard and goods made from these materials, not
included in other classes; printed matter; bookbinding material;
photographs; stationery; adhesives for stationery or household
purposes; artists' materials; paint brushes; typewriters and office
requisites (except furniture); instructional and teaching material
(except apparatus); plastic materials for packaging (not included in
other classes); playing cards; printers' type; printing blocks.
17. Rubber, gutta-percha, gum, asbestos, mica and goods made
from these materials and not included in other classes; plastics in
extruded form for use in manufacture; packing, stopping and
insulating materials; flexible pipes, not of metal.
18. Leather and imitations of leather, and goods made of these
materials and not included in other classes; animal skins, hides;
trunks and travelling bags; umbrellas, parasols and walking sticks;
whips, harness and saddlery.
19. Building materials (non-metallic); nonmetallic rigid pipes
for building; asphalt, pitch and bitumen; nonmetallic transportable
buildings; monuments, not of metal.
20. Furniture, mirrors, picture frames; goods (not included in
other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory,
whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes
for all these materials, or of plastics.
21. Household or kitchen utensils and containers (not of
precious metal or coated therewith); combs and sponges; brushes
(except paint brushes); brush making materials; articles for
cleaning purposes; steel wool; unworked or semi worked glass (except
glass used in building); glassware, porcelain and earthenware not
included in other classes.
22. Ropes, string, nets, tents, awnings, tarpaulins, sails,
sacks and bags (not included in other classes); padding and stuffing
materials (except of rubber or plastics); raw fibrous textile
materials.
23. Yarns and threads, for textile use.
24. Textiles and textile goods, not included in other classes;
beds and table covers.
25. Clothing, footwear, headgear.
26. Lace and embroidery, ribbons and braid; buttons, hooks and
eyes, pins and needles; artificial flowers.
27. Carpets, rugs, mats and matting, linoleum and other
materials for covering existing floors; wall hangings (non textile).
28. Games and playthings; gymnastic and sporting articles not
included in other classes; decorations for Christmas trees.
29. Meat, fish, poultry and game; meat extracts; preserved,
dried and cooked fruits and vegetables; jellies, jams, fruit sauces;
eggs, milk and milk products; edible oils and fats.
30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial
coffee; flour and preparations made from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking powder; salt,
mustard; vinegar, sauces (condiments); spices; ice.
31. Agricultural, horticultural and forestry products and grains
not included in other classes; live animals; fresh fruits and
vegetables; seeds, natural plants and flowers; foodstuffs for
animals; malt.
32. Beers; mineral and aerated waters and other nonalcoholic
drinks; fruit drinks and fruit juices; syrups and other preparations
for making beverages.
33. Alcoholic beverages (except beers).
34. Tobacco; smokers' articles; matches.
Services
35. Advertising; business management; business administration;
office functions.
36. Insurance; financial affairs; monetary affairs; real estate
affairs.
37. Building construction; repair; installation services.
38. Telecommunications.
39. Transport; packaging and storage of goods; travel
arrangement.
40. Treatment of materials.
41. Education; providing of training; entertainment; sporting
and cultural activities.
42. Providing of food and drink; temporary accommodation;
medical, hygienic and beauty care; veterinary and agricultural
services; legal services; scientific and industrial research;
computer programming; services that cannot be classified in other
classes.
Dated: August 30, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of
Patents and Trademarks.
[FR Doc. 99-22957 Filed 9-7-99; 8:45 am]
BILLING CODE 3510-16-P
